U.S. ITC to Investigate Canon’s Patent-Infringement Allegations Against Third-Party Toner-Cartridge Sellers

Acting on a complaint received from Canon, the U.S. International Trade Commission (ITC) announced on March 26th that it’s voted to investigate various non-OEM, third-party toner cartridges and components manufactured and/or distributed in the United States by companies such as Ninestar and PrintRite. The toner cartridges and imaging drums are sold for use in HP Inc. and Canon laser printers, with Canon arguing that they infringe on various Canon patents.

On February 28th, Canon Inc. of Tokyo, Japan, Canon U.S.A. of Melville, New York, and Canon Virginia of Newport News, Virginia, submitted their patent-infringement complaint to the ITC and requested that the ITC issue a general exclusion order and cease-and-desist orders against some  50 companies, alleging that the toner cartridges and drums are being imported into the United States by various companies, which are based in China, Hong Kong, Macau, Canada, and the United States. Canon says that the laser-printer supplies infringe on the following U.S. Canon patents: 9,746,826; 9,836,021; 9,841,727; 9,841,728; 9,841,729; 9,857,764; 9,857,765; 9,869,960; and 9,874,846.

Canon also filed patent-infringement lawsuits against several of the companies, including Static Control Components. Static Control Components says it’s the world’s largest manufacturer and distributor of parts and supplies supporting the  toner remanufacturing industry.

Canon filed a patent-infringement lawsuit against Static Control in the U.S. District Court for the Middle District of North Carolina on February 28th, alleging that Static Control’s replacement toner cartridges and imaging drums designed for use in Canon and HP laser printers infringe on Canon’s patents.

Canon’s complaint with the ITC also alleges violations of section 337 of the Tariff Act of 1930 in the importation into the United States and sale of certain toner cartridges and components that are said to infringe on the Canon patents.

The ITC will has identified the following as respondents in this investigation:

Ninestar Corporation of Guangdong, China;
Ninestar Image Tech Limited of Guangdong, China;
Ninestar Technology Company, Ltd., of City of Industry, CA;
Apex Microtech Ltd. of Hong Kong;
Static Control Components, Inc., of Sanford, NC;
Aster Graphics, Inc., of Placentia, CA;
Jiangxi Yibo E-tech Co., Ltd., of Xinyu City, Jiangxi, China;
Aster Graphics Co., Ltd., of Guangdong, China;
Print-Rite Holdings Ltd. of Hong Kong;
Print-Rite N.A., Inc., of La Vergne, TN;
Union Technology Int’l (M.C.O.) Co. Ltd. of Rodrigues, Macau;
Print-Rite Unicorn Image Products Co. Ltd. of Zhuhai, China;
Kingway Image Co., Ltd. d/b/a Zhu Hai Kingway Image Co., Ltd., of Zhuhai, China;
Ourway Image Tech. Co., Ltd., of Zhuhai, China;
Ourway Image Co., Ltd., of Zhuhai, China;
Zhuhai Aowei Electronics Co., Ltd., of Zhuhai, China;
Ourway US Inc. of City of Industry, CA;
Acecom, Inc. – San Antonio d/b/a InkSell.com of San Antonio, TX;
ACM Technologies, Inc., of Corona, CA;
Arlington Industries, Inc., of Waukegan, IL;
Bluedog Distribution Inc. of Hollywood, FL;|
Do It Wiser LLC d/b/a Image Toner of Alpharetta, GA;
EIS Office Solutions, Inc., of Houston, TX;
eReplacements, LLC, of Grapevine, TX;
Frontier Imaging Inc. of Compton, CA;
Garvey’s Office Products, Inc., of Niles, IL;
Global Cartridges of Burlingame, CA;
GPC Trading Co., Limited d/b/a GPC Image of Hong Kong;
Hong Kong BoZe Co., Limited d/b/a Greensky of Hong Kong;
Master Print Supplies, Inc. d/b/a HQ Products of Burlingame, CA;
i8 International, Inc. d/b/a Ink4Work.com of City of Industry, CA;
Ink Technologies Printer Supplies, LLC, of Dayton, OH;
LD Products, Inc., of Long Beach, CA;
Linkyo Corp. d/b/a SuperMediaStore.com of La Puente, CA;
CLT Computers, Inc. d/b/a Multiwave and MWave of Walnut, CA;
Imaging Supplies Investors, LLC d/b/a SuppliesOutlet.com, SuppliesWholesalers.com, and OnlineTechStores.com of Reno, NV;
Online Tech Stores, LLC d/b/a SuppliesOutlet.com, SuppliesWholesalers.com, and OnlineTechStores.com of Grand Rapids, MI;
Kuhlmann Enterprises, Inc. d/b/a Precision Roller of Phoenix, AZ;
Print After Print, Inc. d/b/a OutOfToner.com of Phoenix, AZ;
Fairland, LLC d/b/a ProPrint of Anaheim Hills, CA;
Reliable Imaging Computer Products, Inc., of Northridge, CA;
Apex Excel Limited d/b/a ShopAt247 of Rowland Heights, CA;
The Supplies Guys, LLC, of Lancaster, PA;
Billiontree Technology USA Inc. d/b/a Toner Kingdom of City of Industry, CA;
FTrade Inc. d/b/a ValueToner of Staten Island, NY;
V4INK, Inc., of Ontario, CA;
World Class Ink Supply, Inc., of Woodbury, NJ;
9010-8077 Quebec Inc. d/b/a Zeetoner of Quebec, Canada; and
Zinyaw LLC d/b/a TonerPirate.com and Supply District of Houston, TX.

The ITC noted that its announcement of the investigation doesn’t yet reflect any decision on the merits of the case. The ITC’s chief administrative law judge will assign the case to one of the ITC’s administrative law judges, who will schedule and hold an evidentiary hearing. The administrative law judge will make an initial determination as to whether there is a violation of section 337; that initial determination is subject to review by the ITC.

The ITC says it will make a final determination in the investigation “at the earliest practicable time. Within 45 days after institution of the investigation, the USITC will set a target date for completing the investigation. USITC remedial orders in section 337 cases are effective when issued and become final 60 days after issuance unless disapproved for policy reasons by the U.S. Trade Representative within that 60-day period.”

HP’s Take

Needless to say, HP supports Canon’s relentless efforts to bring this extensive array of suspects to justice:

“Intellectual property protections foster the research and development that drives innovation. We support the efforts Canon is making to protect and defend their intellectual property found in Original HP Toner cartridges. Our Original HP Toner Cartridges are the result of decades of investment, providing customers with legendary HP LaserJet reliability and consistent quality prints, all supported by our industry-leading recycling program.” – Andy Binder, Vice President & General Manager, Office Supplies Solutions, Supplies Business Organization, HP Inc.

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