Notice2022-15907
Certain Toner Supply Containers and Components Thereof (II); Notice of Commission Final Determination Finding a Violation of Section 337; Issuance of a General Exclusion Order and Cease and Desist Orders; Termination of the Investigation
Primary source
Metadata and text below are from the Federal Register, a public-domain U.S. government work. Always verify the official published version before relying on it for any legal matter.
Published
July 26, 2022
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has found a violation of section 337 of the Tariff Act of 1930, as amended, in this investigation and has issued a general exclusion order ("GEO") prohibiting the importation of certain infringing toner supply containers and components thereof, as well as cease and desist orders ("CDOs") against certain defaulting respondents. The investigation is terminated.
Full Text
<html>
<head>
<title>Federal Register, Volume 87 Issue 142 (Tuesday, July 26, 2022)</title>
</head>
<body><pre>
[Federal Register Volume 87, Number 142 (Tuesday, July 26, 2022)]
[Notices]
[Pages 44423-44424]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-15907]
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1260]
Certain Toner Supply Containers and Components Thereof (II);
Notice of Commission Final Determination Finding a Violation of Section
337; Issuance of a General Exclusion Order and Cease and Desist Orders;
Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (``Commission'') has found a violation of section 337 of the
Tariff Act of 1930, as amended, in this investigation and has issued a
general exclusion order (``GEO'') prohibiting the importation of
certain infringing toner supply containers and components thereof, as
well as cease and desist orders (``CDOs'') against certain defaulting
respondents. The investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Lynde Herzbach, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-3228. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at <a href="https://edis.usitc.gov">https://edis.usitc.gov</a>. For help accessing EDIS, please email
<a href="/cdn-cgi/l/email-protection#86c3c2cfd5b5cee3eaf6c6f3f5eff2e5a8e1e9f0"><span class="__cf_email__" data-cfemail="f0b5b4b9a3c3b8959c80b08583998493de979f86">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its internet server at <a href="https://www.usitc.gov">https://www.usitc.gov</a>. Hearing-impaired persons are advised that information on
this matter can be obtained by contacting the Commission's TDD
terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On April 13, 2021, the Commission instituted
this investigation based on a complaint filed by Canon Inc. of Tokyo,
Japan; Canon U.S.A., Inc. of Melville, New York; and Canon Virginia,
Inc. of Newport News, Virginia (collectively, ``Canon''). 86 FR 19287-
88 (Apr. 13, 2021). The complaint, as supplemented, alleges violations
of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337)
(``section 337''), based on the importation into the United States, the
sale for importation, and the sale within the United States after
importation of certain toner supply containers and components thereof
by reason of infringement of certain claims of thirteen patents: U.S.
Patent Nos. 10,209,667; 10,289,060; 10,289,061; 10,295,957; 10,488,814;
10,496,032; 10,496,033; 10,514,654; 10,520,881; 10,520,882; 8,565,649
(``the '649 patent''); 9,354,551 (``the '551 patent''); and 9,753,402
(``the '402 patent''). Id. at 19287. The complaint further alleges that
a domestic industry (``DI'') exists. Id.
The Commission instituted two separate investigations based on the
complaint and defined the scope of the present investigation as whether
there is a violation of section 337 based on the allegations of
infringement as to the asserted claims of the '649, '551, and '402
patents (collectively, ``the Asserted Patents'') as to the accused
products identified in the notice of investigation (``NOI''). Id. The
NOI named eleven respondents: (1) Sichuan XingDian Technology Co., Ltd.
(``Sichuan XingDian'') of Sichuan, China; (2) Sichuan Wiztoner
Technology Co., Ltd. (``Sichuan Wiztoner'') of Sichuan, China; (3)
Anhuiyatengshangmaoyouxiangongsi (``Yatengshang'') of Ganyuqu, China;
(4) ChengDuXiangChangNanShiYouSheBeiYouXianGongSi (``ChengDuXiang'') of
SiChuanSheng, China; (5) Digital Marketing Corporation d/b/a Digital
Buyer Marketing Company (``Digital Buyer'') of Los Angeles, California;
(6) Do It Wiser, LLC d/b/a Image Toner of Wilmington, Delaware; (7)
Hefeierlandianzishangwuyouxiangongsi (``Erlandianzishang'') of
Chengdushi, China; (8) MITOCOLOR INC. (``TopInk'') of Rowland Heights,
California; (9) Xianshi yanliangqu canqiubaihuodianshanghang of
Shanxisheng, China; (10) Zhuhai Henyun Image Co., Ltd. of Zhuhai, China
(collectively, the ``Defaulting Respondents''); and (11) Shenzhenshi
Keluodeng Kejiyouxiangognsi (``KenoGen'') of Guangdong, China. Id. The
Office of Unfair Import Investigations (``OUII'') is also named as a
party. Id. at 19287-88. The Commission's determination in Inv. No. 337-
TA-1259 will separately address any violation of section 337 based on
infringement of the asserted claims of the remaining patents in Canon's
complaint. See 86 FR 19284-86 (Apr. 13, 2021).
On May 27, 2021, the Commission granted Canon's motion to amend the
complaint and NOI to change the identification of Do It Wiser, LLC d/b/
a Image Toner to Do It Wiser, Inc. d/b/a Image Toner (hereinafter, ``Do
It Wiser'') and to make related changes in paragraph 31 of the
complaint. Order No. 6 (May 17, 2021), unreviewed by 86 FR 29806-07
(June 3, 2021).
On September 7, 2021, the Commission terminated the following
asserted claims from the investigation based on Canon's withdrawal of
the complaint as to those claims: (i) claim 2 of the '649 patent; (ii)
claims 2, 3, 6, and 7 of the '551 patent; and (iii) claims 25-27, 39-
41, and 46 of the '402 patent. Order No. 10 (Aug. 12, 2021), unreviewed
by Comm'n Notice (Sept. 7, 2021).
Also on September 7, 2021, the Commission terminated respondent
KenoGen from the investigation based on Canon's withdrawal of the
complaint as to KenoGen. Order No. 12 (Aug. 13, 2021), unreviewed by
Comm'n Notice (Sept. 7, 2021). As a result, the ten Defaulting
Respondents are the only respondents remaining in this investigation.
On October 29, 2021, the Commission found the Defaulting
Respondents in default for failing to respond to the complaint and NOI
and failing to show cause why they should not be found in default.
Order No. 15 (Sept. 29, 2021), unreviewed by Comm'n Notice (Oct. 29,
2021).
On October 1, 2021, Canon filed a motion seeking summary
determination that the Defaulting Respondents have violated section 337
and requesting a recommendation that the Commission issue a general
exclusion order (``GEO''), issue cease and desist orders (``CDOs'')
against certain respondents, and set a one hundred percent (100%) bond
for any importations of infringing goods during the period of
Presidential review. On October 25, 2021, OUII filed a response
supporting Canon's motion and requested remedial relief. No Defaulting
Respondent filed a response to Canon's motion.
[[Page 44424]]
On February 11, 2022, the presiding Chief Administrative Law Judge
(``CALJ'') issued an initial determination (``ID'') granting Canon's
motion and finding violations of section 337 by the Defaulting
Respondents. Specifically, the ID finds that: (i) the Commission has
subject matter, personal, and in rem jurisdiction in this
investigation; (ii) Canon has standing to assert the Asserted Patents;
(iii) Canon has satisfied the importation requirement as to all
Defaulting Respondents; (iv) the accused products practice claims 1, 6,
7, 12, 25, and 26 of the '649 patent, claims 1, 4, and 5 of the '551
patent, and claims 1, 15-18, 32, 36, and 37 of the '402 patent; (v)
Canon has satisfied the technical prong of the DI requirement with
respect to the Asserted Patents; (vi) Canon has satisfied the economic
prong of the DI requirement with respect to the Asserted Patents; and
(vii) no claim of the Asserted Patents has been shown invalid. The
CALJ's recommended determination on remedy and bonding recommended that
the Commission: (i) issue a GEO; (ii) issue CDOs against eight
respondents (i.e., Digital Buyer, Do It Wiser, TopInk, Sichuan
XingDian, Sichuan Wiztoner, Yatengshang, ChengDuXiang, and
Erlandianzishang); and (iii) set a 100 percent bond for any
importations of infringing products during the period of Presidential
review. No party petitioned for review of the subject ID.
The Commission did not receive any submissions on the public
interest from the parties pursuant to Commission Rule 210.50(a)(4) (19
CFR 210.50(a)(4)). The Commission also did not receive any submissions
on the public interest from members of the public in response to the
Commission's Federal Register notice. 87 FR 9379-80 (Feb. 18, 2022).
On March 30, 2022, the Commission determined to review the ID in
part. 87 FR 19707-09 (Apr. 5, 2022). Specifically, the Commission
determined to review the ID's analysis of the economic prong of DI
requirement. Id. The Commission further requested briefing on remedy,
bonding, and the public interest. Id.
On April 13, 2022, Canon and OUII filed their initial written
responses to the Commission's request for briefing. On April 10, 2021,
Canon and OUII filed reply submissions.
Having reviewed the record of the investigation, including the ID
and Canon's and OUII's submissions, the Commission has found a
violation of section 337 with respect to Defaulting Respondents. The
Commission affirms, with modified analysis, the ID's findings that the
economic prong of the DI requirement has been satisfied under section
337(a)(3)(A) and (B). See 19 U.S.C. 1337(a)(3)(A), (B). (Commissioner
Kearns finds the economic prong satisfied under section 337(a)(3)(A)
and takes no position with respect to section 337(a)(3)(B)).
(Commissioner Stayin writes separately, but joins the Commission's
determination that the economic prong of the DI requirement has been
satisfied under section 337(a)(3)(A) and (B).) The Commission also
corrects two typographical errors on pages 50 and 58 of the ID, as
explained in the Commission's opinion.
Moreover, the Commission finds that the statutory requirements for
issuance of a GEO under section 337(g)(2) are met. See 19 U.S.C.
1337(g)(2). The Commission also finds it appropriate to issue CDOs
against Digital Buyer, Do It Wiser, TopInk, Sichuan XingDian, Sichuan
Wiztoner, Yatengshang, ChengDuXiang, and Erlandianzishang. See 19
U.S.C. 1337(g)(1). In addition, the Commission finds that the public
interest factors do not preclude issuance of the requested relief. See
19 U.S.C. 1337(g)(1).
The Commission therefore has determined that the appropriate remedy
in this investigation is: (1) a GEO prohibiting the unlicensed entry of
certain toner supply containers and components thereof that infringe
one or more of claims 1, 6, 7, 12, 25, and 26 of the '649 patent;
claims 1, 4, and 5 of the '551 patent; or claims 1, 15, 16, 17, 18, 32,
36, and 37 of the '402 patent; and (2) CDOs against Digital Buyer, Do
It Wiser, TopInk, Sichuan XingDian, Sichuan Wiztoner, Yatengshang,
ChengDuXiang, and Erlandianzishang. The Commission has also determined
that the bond during the period of Presidential review shall be in the
amount of 100 percent of the entered value of the Accused Products that
are subject to the GEO and CDOs. See 19 U.S.C. 1337(j).
The Commission's reasoning in support of its determinations is set
forth more fully in its opinion. The Commission's opinion and orders
were delivered to the President and to the United States Trade
Representative on the day of their issuance. The investigation is
terminated.
While temporary remote operating procedures are in place in
response to COVID-19, the Office of the Secretary is not able to serve
parties that have not retained counsel or otherwise provided a point of
contact for electronic service. Accordingly, pursuant to Commission
Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the
Commission orders that the Complainant complete service for any party
without a method of electronic service noted on the attached
Certificate of Service and shall file proof of service on the
Electronic Document Information System (EDIS).
The Commission vote for this determination took place on July 20,
2022.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in Part 210 of the Commission's Rules of Practice and Procedure (19 CFR
part 210).
By order of the Commission.
Issued: July 20, 2022.
Katherine Hiner,
Acting Secretary to the Commission.
[FR Doc. 2022-15907 Filed 7-25-22; 8:45 am]
BILLING CODE 7020-02-P
</pre><script data-cfasync="false" src="/cdn-cgi/scripts/5c5dd728/cloudflare-static/email-decode.min.js"></script></body>
</html>Indexed from Federal Register on July 26, 2022.
This is legal information, not legal advice. Laws vary by jurisdiction and change frequently. Always verify current law with official sources and consult a licensed attorney in your jurisdiction for advice on your specific situation.