ITC to Review Key Toner-Cartridge Non-Infringement Ruling

The U.S. International Trade Commission (ITC) has announced it will review a recent decision made by an ITC Administrative Law Judge (ALJ) who granted  summary determination of non-infringement of certain patents related to Canon toner cartridges used primarily in HP laser printers.

Shortly after the decision was issued, Canon Inc. of Tokyo, Japan, filed a petition with the ITC requesting that it review and ultimately reverse the ALJ’s decision as being based on a legally erroneous claim construction. The ITC will now review the decision to determine whether it should be reversed.


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).

In March 2019, an ITC ALJ ruled that the patents were not infringed upon, and that the ITC investigation has 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, the ITC judge 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.”

Canon Petition

Canon appealed the decision in April 2019 arguing that the ITC administrative law judge erred in her decision, and that the ruling of non-infringement should be reversed.

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