Ninestar Comments on ITC Patent-Infringement Decision
In the wake of a key ruling by the United States International Trade Commission (ITC) last week, China-based Ninestar, which markets aftermarket toner cartridges, and also owns Lexmark International, issued the following statement.
Under the decision, Administrative Law Judge Dee Lord issued a summary determination of non-infringement for Aster, Ninestar, and Print-Rite, ruling against Canon Inc., which alleged that the companies infringed upon several of its patents for toner cartridges used in HP laser printers.
In its statement released on March 15th, Ninestar also says it will defend its own intellectual property, stating: “We respect IP rights of others and we also request ours to be respected. To take actions and assert IP rights will become one of the priorities of Ninestar legal department in the next couple of years.
Also on March 15th, Ninestar stated it was released new after-market toner cartridges compatible with HP laser printers and defended its cartridges as not infringing on Canon patents – see the Ninestar press release here.
Ninestar’s complete statement is as follows:
“Following the Markman Order and as anticipated, the ALJ (administrative law judge) Dee Lord issued the initial determination (ID) which granted Ninestar’s motion for summary determination of non-infringement and terminated the investigation in its entirety, among others. The ID will become the determination of the Commission 45 days after the service provided that neither party petitions for review within 10 days.
“Ninestar cartridges found to be not infringing are characterized by the pistol style gears (known as “lever” and “button”, per different generations) and are released to react against 918 Investigation initiated in 2014. The industry may very well recollect that this design-around solution was the first one to be admitted not infringing in the ITC as well as the first redesign commercialized and available for the market. However, few people know that the R&D process on this redesign started long before. To protect its IP rights created on this solution, Ninestar began to file patents applications from 2009 and kept expanding the portfolio. So far, Ninestar has been awarded 160+ patents all over the world that covers virtually all viable embodiments of the pistol solution.
After just 4 years, 1106 Investigation is commenced in 2018. As always, Ninestar is vigorously defending its products and customers on one hand and developing new designs on the other. The Sidewinder solution was announced three months after the commencement of the Investigation and was admitted in July by Canon not infringing the asserted patents. In another two months, the quality-improved and client-friendly solution called SW4 was announced and was admitted not infringing as well. This SW4 design are now generally used and stably performed on our full range of products.
Over the past two decades, Ninestar has built its reputation and been widely recognized as the major innovator and leader in the aftermarket industry. We respect IP rights of others and we also request ours to be respected. To take actions and assert IP rights will become one of the priorities of Ninestar legal department in the next couple of years. At same time and like always, Ninestar will continue to devote in technology innovation and quality improvement to bring customers the best products and service.”
- March 2018: Canon Loses Patent-Infringement Case with U.S. International Trade Commission
- March 2018: Canon Launches Massive Legal Offensive Against 49 U.S. Clone Toner-Cartridge Sellers
- March 2018: U.S. ITC to Investigate Canon’s Patent-Infringement Allegations Against Third-Party Toner-Cartridge Sellers
- March 2018: HP Speaks Out on Canon’s Massive U.S. Patent-Infringement Campaign