ITC Affirms Key Ruling of Non-Infringement of Canon Toner Cartridges

On May 20th, the United States International Trade Commission (ITC) issued a notice affirming the Administrative Law Judge (ALJ)’s initial determination granting Ninestar, Static Control, and some other aftermarket toner-cartridge makers motions for summary determination of non-infringement. of various Canon Inc. patents relating to toner cartridges primarily used in HP laser printers. Accordingly, the commission determined there was no violation of section 337 and terminated its  investigation is terminated.

Last month, Canon Inc., Canon U.S.A., and Canon Virginia  filed a petition to reverse a key ruling issued by the ITC in March 2019 that non-OEM toner cartridges designed for use in HP laser printers and sold by three companies, Aster, Ninestar, and Print-Rite, did not infringe on Canon patents.

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.

Canon Inc., Canon U.S.A., and Canon Virginia, Inc. filed a complaint on February 28, 2018 with the ITC, alleging that certain toner cartridges and components made and sold by Ninestar, Static, Print-Rite, Aster and various other companies infringe on nine of Canon’s U.S. patents. On June 13, 2018, Canon filed a motion to amend the complaint which reduced the number of patents to seven: U.S. Patent Nos. 9,746,826; 9,836,021; 9,841,729; 9,857,764; 9,857,765; 9,869,960; 9,874,846.

Yesterday, Ninestar issued a press release, noting that it has “mounted a fierce defense” of the initial ruling. It noted that ITC records show that on August 30, 2018, the ALJ held a Markman hearing (a hearing to determine the scope of Canon’s asserted patents). The hearing transcript obtained from the ITC’s online docket shows that two attorneys representing Ninestar and Static argued the case for all respondents only.

Ninestar also noted that, on February 28, 2019, the ALJ issued the Markman order agreeing with Ninestar and Static on critical claim construction issues. In light of the Markman order, Canon stipulated to non-infringement of the accused products by Ninestar, Static and others. As a result, the ALJ issued the ID of non-infringement on March 13, 2019.

“We are very pleased that the ITC confirmed that Ninestar does not infringe Canon’s patents,” said Jason Wang, general manager of Ninestar Image Tech Limited. “As a leader of the aftermarket, Ninestar takes great pride in developing innovative cutting-edge products, protected by Ninestar’s own intellectual property.”

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