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.

ITC impose a penalty of US$ 20,504,974.16 against Ninestar Technology

TOKYO, Japan, May 1, 2009 – The Honorable Paul J. Luckern issued an Enforcement Initial Determination on April 17 that finds Ninestar, which sells ink cartridges under the “G&G” and “OA-100″ brands, repeatedly imported into the United States and sold after importation cartridges that infringe certain patents owned by Epson in violation of the General Exclusion Order and certain Limited Exclusion Orders and Cease and Desist Orders issued on October 19, 2007 by the U.S. International Trade Commission (”ITC”).

The decision recommended that the ITC impose a penalty of US$ 20,504,974.16 jointly and severally against Ninestar Technology Co. Ltd. of Zhuhai, China and its two affiliated US companies, Ninestar US and Town Sky. The judge also found four other companies violated the ITC’s Orders and recommended penalties in the amount of US$ 9,700,000 against Mipo International Ltd. and Mipo America Ltd., as well as US$ 700,000 against Ribbon Tree USA Inc. doing business as Cana-Pacific Ribbons Inc. and Apex Distributing Inc. The penalty against Ninestar is the largest penalty that has ever been recommended by an ITC judge. Penalties have been assessed only infrequently in the reported history of the ITC. They are collected by and for the United States government.

Judge Luckern’s ruling arises from enforcement proceedings that were instituted in 2008 by the ITC to determine whether the seven Chinese and U.S. companies continued to import into the United States and sell after importation infringing ink cartridges in violation of the ITC’s General Exclusion Order, Limited Exclusion Orders and Cease and Desist Orders that were entered on October 19, 2007. These Orders were entered after the ITC completed an investigation in 2006-2007 and determined that patents belonging to Epson were valid, enforceable, and infringed by over one thousand accused products.

Judge Luckern conducted an enforcement trial in January 2009 that was defended by the Ninestar companies. The other four respondents defaulted. Based on the extensive evidence presented at the enforcement trial, the judge found that all of the enforcement respondents imported into the United States and/or sold after importation infringing cartridges repeatedly in violation of the ITC’s General Exclusion Order, Limited Exclusion Orders and Cease and Desist Orders. The judge also rejected all of Ninestar’s defenses.

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.

HP and Ninestar Resolve Patent Issues

HP has resolved patent violation issues with Ninestar Image Co. Ltd. over HP 02 and HP 14 inkjet cartridges.

Ninestar has agreed to stop selling the cartridges in the United States and other countries where HP has patent rights. Ninestar has agreed to pay HP an undisclosed sum of money.

This is the second patent violation issue between HP and Ninestar. In July 2006, HP filed complaints with the U.S. District Court and the International Trade Commission for patent infringement on other inkjet cartridges.

The two reached a settlement in March 2007 in which Ninestar agreed to remove its products from certain countries.

U.S. Court of Appeals Affirms ITC General Exclusion Order That Prohibits Imports of Infringing Ink Cartridges

Epson Continues Enforcement of Its Ink Cartridge Patents - – LONG BEACH, United States.- On January 13, the U.S. Court of Appeals for the Federal Circuit in Washington D.C. affirmed the Final Determination and General Exclusion Order of the U.S. International Trade Commission ("ITC").

A General Exclusion Order that bars imports of infringing new and refilled cartridges was entered by the ITC in October 2007, after an ITC trial established widespread infringement of Epson’s cartridge patents by many foreign manufacturers, importers and U.S. distributors.

The unsuccessful Appeal was filed by Ninestar Technologies Co, Ltd.of China, Ninestar’s U.S.
subsidiaries and Dataproducts USA LLC (a division of Clover Technologies Group). Epson will vigorously proceed with enforcement of its patents now that the validity and enforceability of its patents have again been ratified.

A second ITC trial was conducted on Jan.14-16, 2009 in Washington D.C. to determine any financial penalties that may be assessed against Ninestar, Mipo America,Ltd. and Cana-Pacific Ribbons Inc. and their affiliates for alleged violations of the General Exclusion Order.

The ITC has not yet determined any violations, but has the authority to assess substantial penalties up to $100,000 per day of violations or twice the commercial value of infringing imports. In addition to the ITC actions, Epson filed U.S. District Court lawsuits in Portland, Ore., for patent infringement damages against the same 24 companies named in the ITC action and numerous additional distributors and retailers alleged to have continued infringements after the ITC Final Determination.

The District Court cases were stayed pending the ITC Determination and Appeal, but will now proceed against those defendants that have not settled. Recently, Epson settled two of these lawsuits filed against major internet retailers: Media Street Inc. and Comptree Inc.

Epson maintains a Web site (http://www.itc.epson.com/) that provides U.S. importers, distributors and retailers with timely information about the ITC action and related U.S. District Court lawsuits. The U.S. Court of Appeals Judgment, ITC Exclusion Orders, ITC Seizure and Forfeiture Orders, ITC Enforcement Complaints, and U.S. District Court complaints referenced in this press release are all posted on the Web site with other useful information including a summary of the legal requirements for refilled cartridges.

These ITC actions and U.S. District Court lawsuits were all brought by Epson Portland Inc., Epson America Inc. and Seiko Epson Corp. as part of Epson’s worldwide efforts to protect Epson’s intellectual property rights and its substantial investments in R & D to produce high quality, innovative printers and ink cartridges.

Although most U.S. importers and distributors have now undertaken commendable efforts to avoid infringing Epson’s cartridge patents, Epson will continue taking the necessary actions to protect the company and legitimate competitors from ongoing infringements and unfair competition.

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"

Ninestar Establishes New Firm

Ninestar Establishes New Firm

With a strategic investment from holding company Legend Capital, Ninestar has established a new firm, Seine Image International Co. Ltd, which, as of last month, is overseeing Ninestar's toner cartridge business.
"The investment from Legend Capital and the corporate reorganization reflect another step in Ninestar's rapid development," said Benny Yue, general manager of Seine Image.

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.

ITC Rules on Ninestar in Epson case

US ITC made Final Determination on Oct. 19, 2007

Effective Oct. 22, 2007 Ninestar will not be able to accept any new order for accused Epson compatible Inkjet products.

• Ninestar can continue to sell non Patent infringement products.
• Ninestar can maintain Epson Injet sales.

The following details the specifics of the case

• Ninestar can continue to sell All Epson Large format Inkjet Cartridges and PictureMate Inkjet Cartridges.
• Ninestar can continue to sell Ninestar's Patented Non-chip foamless Epson compatible Inkjet Cartridges.
• Ninestar can continue to sell all Epson Remanufactured Inkjet Cartridges.
• Ninestar can continue to sell Ninestar's R-Series Epson Compatible Inkjet.
• Ninestar's customers can continue to sell all Epson compatible inkjet which are already purchased.

The following rules have to be followed after Oct. 19, 2007.

• No company can import Epson Accused Products after Oct. 19, 2007.
• All Respondent can no longer continue to sell Accused Products after Oct. 19, 2007.

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.”

NINESTAR TO CONTEST SECTION 337 INITIAL DETERMINATION with Epson Compatible Products

Judge Rules Ninestar GandG infringed on Epson Patents

ZHUHAI, CHINA, APRIL 5, 2007 – On March 30, Administrative Law Judge Paul J. Luckern of the U.S. International Trade Commission issued an Initial Determination that a number of Epson's U.S. patents relating to ink jet cartridges are infringed by certain products of Ninestar Technology Company, Ltd., a leading Chinese developer and manufacturer of aftermarket ink cartridges and its United States subsidiaries.


Judge Rules 20 other manufacturers infringed on Epson Patents

The Administrative Law Judge also determined that these patents are infringed by 20 other manufacturers, each of whom have either acknowledged infringement by their products or failed to offer any defense. Ninestar is alone among the accused manufacturers in actively contesting Epson's assertions. Ninestar remains fully committed to continue this active defense.

ITC Determination Pending

The Initial Determination has no legal effect unless and until it is adopted by the International Trade Commission which had the power to reject it in full. The Initial Determination also has no effect outside of the United States, or on Ninestar products sold for use in Non-Epson printers or on many Epson compatible products offered by Ninestar which were not accused of infringement. Ninestar thus remains committed to offering its customers a wide range of high quality printer consumables.

Ninestar Contests Ruling.

The Initial Determination is subject to review by the International Trade Commission, which is expected to issue its final decision this summer. Ninestar intends to move the Commission to review and reverse the Initial Determination. Should the Commission adopt the Initial Determination, Ninestar intends to pursue all available appellate channels to seek reversal of the determination.

Ninestars R Series Still OK

Ninestar's new R-series products are not involved in the ITC investigation. Ninestar is confident that its new R-series products therefore will continue to be available to its customers regardless of whether or not the Initial Determination is adopted by the full Commission.

HP announced that it has resolved ink cartridge patent violation issues with China-based Ninestar

In July 2006, HP notified Ninestar of alleged patent infringements of its replacement "clone" cartridges that are compatible with many of HP's printers.

The complaint was originally filed by Hewlett-Packard with the U.S. International Trade Commission against five ink cartridge suppliers in a Aug. 1 filing and was classified as “pending” until Dec 2006.

Named in the filing were NineStar Technology of China and California, one of the worlds largest inkjet cartridge manufacturers, as well as four other companies representing dealers of NineStar products, butterflyinkjet.com, iowaink.com, PrintMicro.com and Inkandbeyond.com.

The complaint alleged violations under section 337 of the Tariff Act of 1930, as amended, involving IP infringement and other unfair acts. HP requested that the USITC institute an investigation and issue a “permanent limited exclusion order and permanent cease and desist orders,” according to official papers submitted.

Today HP announced that it has resolved ink cartridge patent violation issues with China-based Ninestar. As part of the resulting settlement, Ninestar formally acknowledges the validity of HP's patents and has agreed to stop selling the the cartridges in question in the United States and other countries where such patents are held.