Canon Loses Patent-Infringement Case with U.S. International Trade Commission

The United States International Trade Commission (ITC) has ruled against Canon Inc. in a case involving aftermarket toner cartridges, which Canon alleged violate its patents.

Administrative Law Judge Dee Lord issued a summary determination of non-infringement for Aster, Ninestar, and Print-Rite. Canon’s motion for summary determination of patent infringement, and Ninestar’s motion for summary determination of invalidity, were both denied as moot.

In March 2018, the ITC announced that it was initiating a patent-infringement investigation on behalf of Canon Inc. against a number of sellers of after-market third-party toner cartridges, including Ninestar, Print-Rite, and others (see here for the complete list).

Judge Lord also ruled that the ITC investigation has been ended, writing: “Because Canon has not shown a violation of section 337 of the Tariff Act of 1930, as amended, with respect to Ninestar, Print-Rite, and Aster and the other named respondents have been found in default, I hereby terminate the investigation in its entirety.”

Canon had argued that the companies were infringing on its U.S. Patent Numbers 9,746,826; 9,836,021; 9,841,729; 9,857,764; 9,857,765; 9,869,960; 9,874,846; 9,841,727; and 9,841,728.

In her decision, Judge Lord wrote: “With respect to Canon’s motion for summary determination of infringement and Ninestar’s motion for summary determination of invalidity, these motions were premised on the claims being construed so as to not require a coupling member than can pivot between two angular positions. Canon and Ninestar agree that these motions have been rendered moot by the construction of the “movable” limitation adopted in Order No. 38. Joint Submission at 3.”

The ruling will become final unless a party files a petition for review within 45 days after the Initial Determination is issued.

The decision follows Judge Lord’s February decision, in which she issued her Markman Order that determines the scope of asserted patent rights in the ITC 337 investigation. On the most critical interpretation, as to whether a toner-cartridge’s  coupling member can incline with the photosensitive drum, she found that the patents require the coupling member to be pivotable.  However, one of the defendants, Aster, had said that its gears do not pivot.

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