Seiko Epson Corp. has been hit with antitrust counterclaims

Seiko Epson Corp. has been hit with antitrust counterclaims

Seiko Epson Corp. has been hit with antitrust counterclaims in its patent infringement litigation against China's Ninestar Technology Co. Ltd. and other printer supply manufacturers over ink cartridges.

In counterclaims filed Friday in the U.S District Court for the District of Oregon, Ninestar and its affiliates allege that Seiko Epson has patented features in its ink cartridges that are not novel or distinct from prior cartridges in order to prevent others from offering competing ink cartridges for use in Epson printers.

ALJ Wants $30M In Penalties In ITC Ink Cartridge Spat

ALJ Wants $30M In Penalties In ITC Ink Cartridge Spat

Law360New York (April 22, 2009) --

A U.S. International Trade Commission administrative law judge has recommended that China's NineStar Technology Co. Ltd., a U.S. NineStar unit and Town Sky Inc. be held liable for $20.5 million and Mipo International and Mipo America for 9.7 million in civil penalties for violations of a cease-and-desist orders issued in an ink cartridge case brought by Seiko Epson Corp.

In the Matter of Certain Ink Cartridges and Components Thereof; Notice of Institution of Formal Enforcement Proceeding

May 07, 2008 (U.S. International Trade Commission Documents and Publications/ContentWorks via COMTEX) -- -- SUMMARY: Notice is hereby given that the U.S. International Trade Commission has instituted a formal enforcement proceeding relating to exclusion orders and cease and desist orders issued at the conclusion of the above-captioned investigation.
FOR FURTHER INFORMATION CONTACT: Michael Haldenstein, Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone (202) 205-3041. Copies of all nonconfidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone 202-205-2000. General information concerning the Commission may also be obtained by accessing its Internet server (http://www.usitc.gov). The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov/. Hearing-impaired persons are advised that information on the matter can be obtained by contacting the Commission's TDD terminal on 202-205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on March 23, 2006, based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corporation of Japan (collectively "Epson"). 71 FR 14720 (March 23, 2006). The complaint, as amended, alleged violations of section 337 of the Tariff Act of 1930 ("section 337") in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain ink cartridges and components thereof by reason of infringement of claim 7 of U.S. Patent No. 5,615,957; claims 18, 81, 93, 149, 164 and 165 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claims 29, 31, 34 and 38 of U.S. Patent No. 5,156,472; claim 1 of U.S. Patent No. 5,488,401; claims 1-3 and 9 of U.S. Patent No. 6,502,917; claims 1, 31 and 34 of U.S. Patent No. 6,550,902; claims 1, 10 and 14 of U.S. Patent No. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; and claims 21, 45, 53 and 54 of U.S. Patent No. 7,011,397. The complaint further alleged that an industry in the United States exists as required by subsection (a)(2) of section 337. The complainants requested that the Commission issue a general exclusion order and cease and desist orders. The Commission named as respondents 24 companies located in China, Germany, Hong Kong, Korea, and the United States. Several respondents were terminated from the investigation on the basis of settlement agreements or consent orders or were found in default.

On March 30, 2007, the presiding ALJ (Judge Luckern) issued a final ID in the investigation finding a violation of section 337 with respect to certain respondents. He found the asserted claims valid and infringement by certain respondents' products. He recommended issuance of a general exclusion order and cease and desist orders directed to certain respondents and bond in the amount of $13.60 per cartridge during the Presidential review period.

On October, 19, 2007, after review, the Commission made its final determination in the investigation, finding a violation of section 337. The Commission issued a general exclusion order, limited exclusion order, and cease and desist orders directed to several domestic respondents. The Commission also determined that the public interest factors enumerated in 19 U.S.C. 1337(d), (f), and (g) did not preclude issuance of the aforementioned remedial orders, and that the bond during the Presidential review period would be $13.60 per cartridge for covered ink cartridges.

On February 8, 2008, complainant Epson filed two complaints seeking enforcement proceedings under Commission Rule 210.75. One complaint alleges that Ninestar Technology Co., Ltd.; Ninestar Technology Company, Ltd.; and Town Sky Inc. have violated the general exclusion order and that Ninestar Technology Company, Ltd. and Town Sky Inc. have violated the cease and desist orders directed to them. Epson's second complaint alleges that Mipo International Ltd. and Mipo America, Ltd. have violated the general and limited exclusion orders and that Mipo America, Ltd. has violated the cease and desist order directed to it.

Having examined the complaints seeking a formal enforcement proceeding, and having found that the complaints comply with the requirements for institution of a formal enforcement proceeding contained in Commission rule 210.75, the Commission has determined to institute a consolidated formal enforcement proceeding to determine whether the five respondents are in violation of the Commission's exclusion orders and cease and desist orders issued in the investigation, and what, if any, enforcement measures are appropriate.

The following entities are named as parties to the formal enforcement proceeding: (1) Complainant Epson, (2) respondents (Ninestar Technology Co., Ltd.; Ninestar Technology Company, Ltd.; Town Sky Inc.; Mipo America Ltd., and Mipo International, Ltd.) and (3) a Commission investigative attorney to be designated by the Director, Office of Unfair Import Investigations.

The authority for the Commission's determination is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in section 210.75 of the Commission's Rules of Practice and Procedure (19 CFR 210.75).
Issued: May 1, 2008.
By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E8-9984 Filed 5-6-08; 8:45 am]
BILLING CODE 7020-02-P
Notice.
Citation: "73 FR 25768"
Document Number: "Inv. No. 337-TA-565 Consolidated Enforcement Proceeding"
Federal Register Page Number: "25768"
"Notices"

'Father of the Inkjet' moves on

to Assume Presidency of Seiko Epson

Seiko Epson Corp announced April 30, 2008, that Managing Director Minoru Usui will be promoted to President of the company. The current president, Seiji Hanaoka, will assume the post of Chairman.

Hanaoka says, "Mr Usui will have complete authority and I will be responsible for part of overseas operations." According to Hanaoka, Usui, who will assume the presidency, is "the father of the Inkjet" and has been working for many years on the development of piezometric heads found in inkjet printers. The personnel proposal will be formally approved at the shareholders meeting scheduled on June 25 2008.

As part of the personnel change, the President will be replaced in the final year of the company's three-year medium-range business plan. Hanaoka explains the reason for the replacement as follows. "When I assumed the presidency, our two major businesses, the finished product business and electronic the device business, ceased to function properly. However, things started to improve. We are in the middle of the medium-range business plan, but now is the time to create a new domain identity. Usui, who has no equal when it comes to products and technologies, will be the most appropriate person for our goal.

Expressing his resolution, future President Usui, said, "We would like to focus on piezometric head technologies, projectors, crystal oscillators, organic ELs and high-precision processing technologies. Our products are slightly biased toward consumer products. We would like to further expand our business in the fields of business and industry. Seiko Epson has been growing on its unique technologies. It excels in technological development as well as in manufacturing. We will continue to grow on 'unique technology and unique manufacturing'."

Mr Usui, born April 22 1955, is 53 years old. After graduating from the University of Tokyo, Faculty of Engineering, he worked for a company related to ships for six months before joining Shinshu Seiki Co (now Seiko Epson Corp) in November 1979. He became Director in June 2002 and assumed the current post of Managing Director in October 2007. His motto is "Search for the Ultimate," which refers to the pursuit of the ultimate technology."

Usui was approached by Hanaoka in March 2008 regarding the promotion to President. "It was a bolt out of the blue," says Usui. "I am still 53. Part of me wanted to remain in the post of Chief Director of Production Technology Development a little longer," he confessed.

ITC General Exclusion Order Upheld

President George W. Bush and the Office of the U.S. Trade Representative allowed the 60-day Presidential Review Period to expire without modifying the General Exclusion Order by the U.S. International Trade Commission that bars all imports of infringing cartridges. As a result, the order is being actively enforced by the U.S. Customs and Border Protection Service.

The General Exclusion Order resulted from a complaint filed by Epson Portland Inc., Epson America Inc., and the Seiko Epson Corp.against 24 of the largest aftermarket ink cartridge manufacturers and distributors. Following the Commission’s review of the trial results in which the ITC judge found that all 750 accused cartridges infringed one or more of Epson’s 11 patents, the ITC issued a General Exclusion Order that prohibits all imports of infringing cartridges and Cease and Desist Orders that prohibit the Respondent companies and their distributors from all sales of infringing cartridges. Epson has set up a Web site at http://itc.epson.com/ with further information to help ensure importers,distributors and retailers are not caught unaware regarding the consequences of violating the orders and continued infringement.

The General Exclusion Order and Cease and Desist Orders do not bar imports or resale of non-infringing cartridges, like non-infringing refilled cartridges. Resellers should be cautious, however, to avoid liability by noting the following legal parameters:

Legal Parameters

1) Refilling an infringing cartridge, like an infringing aftermarket cartridge, still results in another infringing cartridge.

2) Refilled cartridges that were Epson branded cartridges must have been first sold by Epson to consumers in the United States. A “first sale” exception to patent law allows the resale of refilled patented devices that were first sold in the United States by the patent holder. Cartridges that were first sold by Epson to consumers outside the United States and refilled by a third party still infringe Epson’s patents. Epson officials have observed that some suppliers commingle cartridges first sold by Epson in the United States with cartridges first sold to consumers outside the United States in identical packaging, so resellers cannot reliably avoid liability for patent infringement.

3) The refilling process must be limited to legally permissible repair to restore the cartridge to usable condition, but the cartridges cannot be completely reconstructed. Legally permissible repair includes refilling the ink, resetting the IC chip, removing or covering Epson labels, and repackaging.

4) Refilled cartridges must be prominently described at point of sale and on packaging as “refilled” or “remanufactured.” Any Epson trademarks must be removed so consumers cannot be misled into believing that the cartridges were refilled or approved by Epson.

“Epson is pleased that U.S. Customs is now effectively enforcingthe ITC Orders to prevent unfair competition,” said Elizabeth Leung, director of Consumer Supplies, Epson America Inc. “Distributors and retailers in every market channel can expect Epson to continue vigorous enforcement against any infringers who try to undermine the commendable efforts of all the resellers who compete fairly.”

U.S. PTO Sides With Ninestar

U.S. PTO Sides With Ninestar
NINESTAR PRESS RELEASE: ZHUHAI, China — Recently, the United States Patent and Trademark Office has issued an office action, which rejects Seiko Epson's two patents, including claims 1-6, 8-14 and 16-22 of U.S Patent No.6,502,917( the “917” patent) , and claims 1-8,15-17,19-23,26-30,33 and 37-39 of U.S. Patent No. 7,008,053(the” 053” patent), for the reason that the patents applied some prior art and was lack of novelty and creativity. This rejection by U.S. PTO is in response to Ninestar’s request to re-examine the invalidity of the patents in September 2007.According to Ninestar, this initial rejection of the “917” patent and “053” patent by the U.S.PTO will raise a question of rationality of the order issued by ITC and create favorable conditions for Ninestar's legal cases in the Federal Circuit Court in the future and for Ninestar to continuously sell its own patented products in the U.S. market.

Ninestar Fights Back

Schulte Roth & Zabel Client Ninestar Technology Granted International Trade Commission Review of nitial Determination in Seiko Epson Ink Cartridge Case

New York, NY, July 5, 2007 LAWFUEL - Class Action Litigation Newswire - Schulte Roth & Zabel LLP (“SRZ”) is pleased to announce that the International Trade Commission (“ITC”) has agreed to review a final initial determination by an administrative law judge in the Seiko Epson ink cartridge investigation. SRZ had requested, on behalf of its client, Zhuhai, China-based Ninestar Technology Co., Ltd., that the commission review and reverse the determination, which found that Ninestar and 23 other companies violated Seiko Epson Corp.'s patents for ink cartridges.

First ITC decision to review patent invalidity

The June 29 decision by the ITC is the first time it has agreed to review patent invalidity issues under the altered legal standard for patent obviousness set forth by the U.S. Supreme Court in the landmark decision of KSR International v. Teleflex Inc.Following the KSR International decision, Schulte Roth & Zabel filed a letter with the ITC outlining the significance of the KSR International decision and contending that the new standard set by the Supreme Court for patent obviousness compelled a review and warranted a reversal of the initial determination upholding the validity of various Seiko Epson patents.

New Standards for Patent

The new standard set by the Supreme Court is that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Accordingly, the Commission determined to review whether those portions of the administrative law judge's findings of invalidity for obviousness “are consistent with the Supreme Court's decision in KSR International…”“We are pleased the ITC has decided to review the initial determination,” said Joel Lutzker, partner at Schulte Roth & Zabel and chair of the firm’s intellectual property department. “The new patent obviousness standards set by the Supreme Court’s decision in KSR International v. Teleflex Inc. reflects a shift in jurisprudence for the benefit of industry competition and, ultimately, consumers themselves. Ninestar has fought long and hard in this case to protect the investment the company has made in independently developed technology and we look forward to full Commission review of the initial determination.”

U.S. ITC Orders Review of the Initial Determination in Seiko Epson Cartridge Case

U.S. ITC Orders Review of the Initial Determination in Seiko Epson Cartridge Case

Zhuhai, China – July 2, 2007. Ninestar Technology Co., Ltd. announced today that on June 29, 2007, the United States International Trade Commission ordered review of the initial determination rendered earlier this year by an administrative law judge in the Seiko Epson ink cartridge investigation. Following the administrative law judge's initial determination, Ninestar identified to the Commission numerous errors in the initial determination including errors in claim interpretations and in the infringement conclusions. Ninestar requested that the Commission review and reverse those errors. Upon the U.S. Supreme Court's landmark decision in KSR International Co. v. Teleflex Inc. (April 30, 2007), Ninestar also requested that the Commission review validity of certain Epson patents in light of KSR's lower standard for obviousness.

The Commission has now agreed that review of the issues identified by Ninestar is necessary. This is the first time the Commission has agreed to review invalidity issues using the new KSR standard. Currently the administrative law judge's initial determination has no legal effect.

Rusong Lu, Chairman of Ninestar has stated, "We are extraordinarily pleased that the ITC has accepted our petition for review and are confident that this review will result in reversal of the errors in the initial determination." Mr. Lu added, "This has been a long and expensive battle for Ninestar.

We are the only respondent in the investigation to have actively defended against Seiko Epson's assertions. We have engaged in this battle to protect the investment we have made in independently developed technology as well as to protect our customers.

The Commission's decision to review demonstrates that the confidence we have in our position is justified." Ninestar is represented in this case by a team of lawyers from Schulte Roth & Zabel LLP, of New York headed by Joel Lutzker, chair of Schulte's Intellectual Property Department.