Notice2023-11658
Certain Toner Supply Containers and Components Thereof (I); Notice of Commission Determination To Institute a Modification Proceeding; Schedule and Procedure for the Modification Proceeding
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
June 1, 2023
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has determined to institute a modification proceeding in the above-captioned investigation. The Commission has also determined to delegate the modification proceeding to the Chief Administrative Law Judge ("ALJ") to designate a presiding ALJ to make all necessary factual and legal findings as to infringement and to issue a recommended determination.
Full Text
<html>
<head>
<title>Federal Register, Volume 88 Issue 105 (Thursday, June 1, 2023)</title>
</head>
<body><pre>
[Federal Register Volume 88, Number 105 (Thursday, June 1, 2023)]
[Notices]
[Pages 35915-35917]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2023-11658]
=======================================================================
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1259]
Certain Toner Supply Containers and Components Thereof (I);
Notice of Commission Determination To Institute a Modification
Proceeding; Schedule and Procedure for the Modification Proceeding
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (``Commission'') has determined to institute a modification
proceeding in the above-captioned investigation. The Commission has
also determined to delegate the modification proceeding to the Chief
Administrative Law Judge (``ALJ'') to designate a presiding ALJ to make
all necessary factual and legal findings as to infringement and to
issue a recommended determination.
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#eeabaaa7bddda68b829eae9b9d879a8dc0898198"><span class="__cf_email__" data-cfemail="efaaaba6bcdca78a839faf9a9c869b8cc1888099">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its
[[Page 35916]]
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 under section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337 (``section 337''), 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,
``Complainants''). See 86 FR 19284-86. The complaint, as supplemented,
alleges a violation of section 337 based upon the importation into the
United States, sale for importation, or sale after importation into the
United States of certain toner supply containers and components thereof
by reason of infringement of certain claims of U.S. Patent Nos.
10,209,667 (``the '667 patent''); 10,289,060 (``the '060 patent'');
10,289,061 (``the '061 patent''); 10,295,957 (``the '957 patent'');
10,488,814 (``the '814 patent''); 10,496,032 (``the '032 patent'');
10,496,033 (``the '033 patent''); 10,514,654 (``the '654 patent'');
10,520,881 (``the '881 patent''); 10,520,882 (``the '882 patent'');
8,565,649; 9,354,551; and 9,753,402. Id. The complaint further alleges
that a domestic industry 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 in the importation, sale for
importation, or sale within the United States after importation of
toner supply containers and components thereof by reason of
infringement of certain claims the '667 patent, the '060 patent, the
'061 patent, the '957 patent, the '814 patent, the '032 patent, the
'033 patent, the '654 patent, the '881 patent, and the '882 patent
(collectively, ``the Asserted Patents''). Id.
The notice of investigation (``NOI'') names twenty-six respondents,
including twenty-two later found in default: (1) Sichuan XingDian
Technology Co., Ltd. (``Sichuan XingDian'') of Sichuan, China; (2)
Sichuan Wiztoner Technology Co., Ltd. (``Sichuan Wiztoner'') of
Sichuan, China; (3) Copier Repair Specialists, Inc. (``Copier Repair
Specialists'') of Lewisville, Texas; (4) Digital Marketing Corporation
d/b/a Digital Buyer Marketing Company (``Digital Buyer'') of Los
Angeles, California; (5) Ink Technologies Printer Supplies, LLC (``Ink
Tech'') of Dayton, Ohio; (6) Kuhlmann Enterprises, Inc. d/b/a Precision
Roller (``Precision Roller'') of Phoenix, Arizona; (7) NAR Cartridges
of Burlingame, California; (8) Zhuhai Henyun Image Co., Ltd. (``Zhuhai
Henyun'') of Zhuhai, China; (9) Zinyaw LLC d/b/a <a href="http://TonerPirate.com">TonerPirate.com</a> and
Supply District (``Zinyaw'') of Houston, Texas; (10) Do It Wiser, Inc.
d/b/a Image Toner (``Do It Wiser'') of Wilmington, Delaware; (11)
MITOCOLOR INC. (``MITOCOLOR'') of Rowland Heights, California; (12)
Anhuiyatengshangmaoyouxiangongsi (``Yatengshang'') of Ganyuqu, China;
(13) ChengDuXiangChangNanShiYouSheBeiYouXianGongSi (``ChengDuXiang'')
of SiChuanSheng, China; (14) Hefeierlandianzishangwuyouxiangongsi
(``Erlandianzishang'') of Chengdushi, China; (15) Xianshi yanliangqu
canqiubaihuodianshanghang (``CJ-us'') of Shanxisheng, China; (16)
Ninestar Corporation of Guangdong, China; (17) Ninestar Image Tech
Limited (``Ninestar Image'') of Guangdong, China; (18) Ninestar
Technology Company, Ltd. (``Ninestar Tech'') of Chino, California
(where Ninestar Corporation, Ninestar Image, and Ninestar Tech are
collectively, ``Ninestar Respondents''); (19) Static Control
Components, Inc. (``Static Control'') of Sanford, North Carolina; (20)
Easy Group, LLC (``Easy Group'') of Irwindale, California; (21) LD
Products, Inc. (``LD Products'') of Long Beach, California; and (22)
The Supplies Guys, Inc. (``Supplies Guys'') of Lancaster, Pennsylvania;
(collectively, ``Defaulting Respondents''). Id. The NOI also names the
following respondents who were previously terminated from the
investigation: General Plastic Industrial Co. Ltd. (``General
Plastic'') of Taichung, Taiwan; Katun Corporation (``Katun'') of
Minneapolis, Minnesota; Sun Data Supply, Inc. (``Sun Data Supply'') of
Los Angeles, California; and Shenzhenshi Keluodeng Kejiyouxiangognsi
(``KenoGen'') of Guangdong, China. Id. The Office of Unfair Import
Investigations (``OUII'') was also a party to the investigation. Id.
The complaint and NOI were later amended to correct the name of
originally-identified respondent Do It Wiser, LLC d/b/a Image Toner to
Do It Wiser, Inc. d/b/a Image Toner. Order No. 5 (May 13, 2021),
unreviewed by 86 FR 29292-93 (June 1, 2021).
The Commission found the Ninestar Respondents, Static Control, Easy
Group, LD Products, and Supplies Guys in default. Order No. 7 (June 22,
2021), unreviewed by Notice (July 6, 2021). The Commission also found
respondents Sichuan XingDian, Sichuan Wiztoner, Copier Repair
Specialists, Digital Buyer, Ink Tech, Precision Roller, NAR Cartridges,
Zhuhai Henyun, Zinyaw, Do It Wiser, MITOCOLOR, Yatengshang,
ChengDuXiang, Erlandianzishang, and CJ-us in default. Order No. 18
(Sept. 28, 2021), unreviewed by Notice (Oct. 27, 2021). The Commission
terminated respondents General Plastic, Katun, and Sun Data Supply from
the investigation pursuant to consent order stipulations. Order No. 10
(July 1, 2021), unreviewed by Notice (July 19, 2021). The Commission
further terminated respondent KenoGen from the investigation based on
partial withdrawal of the complaint. Order No. 13, unreviewed by Notice
(Aug. 25, 2021).
The Commission also terminated investigation as to certain claims
of the Asserted Patents. Order No. 11, unreviewed by Notice (Aug. 25,
2021).
On October 1, 2021, Canon filed a motion seeking summary
determination that the Defaulting Respondents have violated section 337
and requesting that the presiding ALJ recommend that the Commission
issue a general exclusion order (``GEO'') and cease and desist orders
(``CDOs'') against certain respondents and set a 100 percent bond for
any importations of infringing goods during the period of Presidential
review.
On May 15, 2022, the presiding Chief ALJ issued an initial
determination (``ID'') granting Canon's motion and finding violations
of section 337 by the Defaulting Respondents with respect to certain
asserted patent claims. The Chief ALJ recommended that the Commission:
(i) issue a GEO; (ii) issue CDOs against respondents Ninestar Tech,
Static Control, Copier Repair Specialists, Digital Buyer, Do It Wiser,
Easy Group, Ink Tech, Precision Roller, LD Products, NAR Cartridges,
Supplies Guys, MITOCOLOR, Zinyaw, Ninestar Corporation, Ninestar Image,
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.
On August 1, 2022, the Commission determined to affirm the ID's
determination of a violation of section 337 with respect to Defaulting
Respondents. 87 FR 48039-41 (Aug. 5, 2022). Accordingly, the Commission
issued: (1) a GEO prohibiting the unlicensed entry of certain toner
supply containers and components thereof that infringe one or more of
claim 1 of the '667 patent; claim 1 of the '060 patent; claim 1 of the
'061 patent; claim 1 of the '957 patent; claims 1 and 12 of the '814
patent; claims 50, 58, and 61 of the '032
[[Page 35917]]
patent; claims 1 and 13 of the '033 patent; claims 46 and 50 of the
'654 patent; claims 1, 10, and 13 of the '881 patent; or claims 1 and 8
of the '882 patent; and (2) CDOs against respondents Ninestar Tech,
Static Control, Copier Repair Specialists, Digital Buyer, Do It Wiser,
Easy Group, Ink Tech, Precision Roller, LD Products, NAR Cartridges,
Supplies Guys, MITOCOLOR, Zinyaw, Ninestar Corporation, Ninestar Image,
Sichuan XingDian, Sichuan Wiztoner, Yatengshang, ChengDuXiang, and
Erlandianzishang. Id.
On April 25, 2023, respondents Katun and General Plastic filed a
petition pursuant to Commission Rule 210.76 (19 CFR 210.76) to modify
the GEO in order to clarify that the order does not cover certain Katun
and General Plastic redesigned toner supply containers (``New Katun
Containers''). Katun and General Plastic also assert that if
Complainants ``seek to extend language of the claims of the Asserted
Patents to cover the New Katun Containers, such an expansion of scope
is impermissible and renders the Asserted Patents invalid.'' Pet. at 2-
3, 29-30.
On May 5, 2023, Complainants filed an opposition to Katun's and
General Plastic's petition for a modification of the GEO. Complainants
argue that Katun and General Plastic have not shown why the redesign
could not have been adjudicated in the original investigation, and thus
there is no basis to conclude the redesign constitutes a changed
condition of fact. Complainants further argue that Katun and General
Plastic do not make a plausible showing that the New Katun Containers
do not infringe the Asserted Patents, and accordingly, no modification
is required. Complainants argue that if a modification proceeding is
instituted, then it should be referred to an ALJ for findings of fact
and an initial determination. OUII did not file a response to the
petition.
The Commission has determined that the petition complies with the
requirements for institution of a modification proceeding under
Commission Rule 210.76(a)(1) (19 CFR 210.76(a)(1)) to determine whether
Katun and General Plastic's redesigned New Katun Containers infringe
one or more of claim 1 of the '667 patent; claim 1 of the '060 patent;
claim 1 of the '061 patent; claim 1 of the '957 patent; claims 1 and 12
of the '814 patent; claims 50, 58, and 61 of the '032 patent; claims 1
and 13 of the '033 patent; claims 46 and 50 of the '654 patent; claims
1, 10, and 13 of the '881 patent; or claims 1 and 8 of the '882 patent.
The modification proceeding shall not include any validity issues
because an invalidity challenge is not a proper basis to modify an
exclusion order. Mayborn Group, Ltd. v. Int'l Trade Comm'n, 965 F.3d
1350 (Fed. Cir. 2020). Further, the consent orders issued against Katun
and General Plastic prohibit them from challenging validity of the
relevant patents. 19 CFR 210.21(c)(4)(vi); Consent Order to Katun and
General Plastic at ] 9 (July 19, 2021). Accordingly, the Commission has
determined to institute a modification proceeding and refer the
petition to the Chief ALJ as detailed in the accompanying Order.
The assigned ALJ will make findings, may request briefing, and will
issue a recommended determination (``RD'') to the Commission within six
months of publication of this notice in the Federal Register. Should
the ALJ determine that more time is necessary, the deadline may be
extended for good cause shown. The Commission will issue a modification
opinion within 90 days of receipt of the ALJ's RD unless the Commission
otherwise orders. The following entities are named as parties to the
proceeding: (1) Canon Inc; (2) Canon U.S.A., Inc.; (3) Canon Virginia,
Inc; (4) Katun; (5) General Plastic; and (6) OUII.
The Commission vote for this determination took place on May 25,
2023.
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: May 26, 2023.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2023-11658 Filed 5-31-23; 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 June 1, 2023.
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.