ITC Issues General & Limited Exclusion Orders, Cease and Desist Orders on Certain Ink Cartridges

Exclusion Orders Sought by Epson Who Asserted 11 Patents Infringed

The ITC instituted this investigation based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corporation of Japan. The complaint, as amended, alleged violations of section 337 in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain ink cartridges and components thereof by reason of infringement of certain claims of eleven U.S. Patents¹.

General Exclusion Order Excludes Infringing Articles Except Under License

According to the general exclusion order, ink cartridges covered by one or more of certain claims of the 957 patent; the 439 patent; the 377 patent; the 148 patent; the 401 patent; the 917 patent; the 902 patent; the 422 patent; the 053 patent; or the 397 patent are excluded from entry for consumption, entry for consumption from a foreign-trade zone (FTZ), or withdrawal from a warehouse for consumption, for the remaining term of the patents, except under license of the patent owner or as provided by law.

Limited Exclusion Order Directed at Eight Defaulting Respondents

According to the limited exclusion order, ink cartridges that are covered by certain claims of the 439 patent and the 472 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, Glory South Software Manufacturing, Inc., Butterfly Image Corp., Mipo International, Mipo America Ltd., AcuJet U.S.A., Inc., Tully Imaging Supplies, Ltd., Wellink Trading Co., Ltd., and Ribbon Tree (Macao) Trading Co., or any of their affiliated companies, parents, subsidiaries, or other related business entities, or any of their successors or assigns, shall be excluded from entry for consumption into the U.S., entry for consumption from a FTZ, or withdrawal from a warehouse for consumption, for the remaining term of the patents, except under license of the patent owner or as provided by law.

Ink cartridges that are covered by certain claims of the 397 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of Mipo International, Mipo America Ltd., Tully Imaging Supplies, Ltd., Wellink Trading Co., Ltd., and Ribbon Tree (Macao) Trading Co., or any of their affiliated companies, parents, subsidiaries, or other related business entities, or any of their successors or assigns, shall be excluded from entry for consumption into the U.S., entry for consumption from a FTZ, or withdrawal from a warehouse for consumption, for the remaining term of the patents, except under license of the patent owner or as provided by law.

Bond Amount During 60-Day Review Period is $13.60 Per Unit

The ITC states that excluded ink cartridges under these orders are entitled to entry for consumption into the U.S., entry for consumption from a FTZ, or withdrawal from a warehouse for consumption, under bond in the amount of $13.60 per ink cartridge from the day after the orders are received by the U.S. Trade Representative, until such time as the USTR notifies the ITC that these actions are approved or disapproved but, in any event, not later than 60 days after the date of receipt of these actions.

CBP May Require Certification, Records if Imports Potentially Subject to Orders

At the discretion of U.S. Customs and Border Protection and pursuant to procedures it establishes, persons seeking to import ink cartridges that are potentially subject to these limited and general exclusion orders may be required to certify that they are familiar with the terms of the orders, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry. CBP may require persons who have provided the certification to furnish such records or analyses as are necessary to substantiate the certification.

Cease and Desist Orders Issued Against Certain Companies. The ITC has also issued cease and desist orders against the importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation) in the U.S., and soliciting U.S. agents or distributors for, ink cartridges covered by certain claims of the 957 patent; the 439 patent; the 377 patent; the 148 patent; the 401 patent; the 917 patent; the 902 patent; the 422 patent; the 053 patent; and the 397 patent and directed to domestic respondents Ninestar Technology Company Ltd., Town Sky Inc., Dataproducts USA LLC, and MMC Consumables Inc.

The ITC has further determined to issue cease and desist orders covering certain claims of the 957 patent; the 439 patent; the 377 patent; the 148 patent; the 472 patent; the 401 patent; the 917 patent; the 902 patent; the 422 patent; the 053 patent; and the 397 patent (Mipo America Ltd. only) and directed to defaulting domestic respondents Glory South Software Manufacturing, Inc., Mipo America Ltd., and AcuJet U.S.A., Inc.

The conduct prohibited under these cease and desist orders may be continued during the 60 day period in which the orders are under review by the USTR,subject to the posting of a bond in the amount of $13.60 per unit of the covered products.)

¹U.S. Patent No. 5,615,957 (the 957 patent); U.S. Patent No. 5,622,439 (the 439 patent); U.S. Patent No. 5,158,377 (the 377 patent); U.S. Patent No. 5,221,148 (the 148 patent); U.S. Patent No. 5,156,472 (the 472 patent); U.S. Patent No. 5,488,401 (the 401 patent); U.S. Patent No. 6,502,917 (the 917 patent); U.S. Patent No. 6,550,902 (the 902 patent); U.S. Patent No. 6,955,422 (the 422 patent); U.S. Patent No. 7,008,053 (the 053 patent); and U.S. Patent No. 7,011,397 (the 397 patent).

ITC contact - Michael Haldenstein (202) 205-3041

ITC notice (Inv. No. 337-TA-565, FR Pub 10/25/07) available at http://a257.g.akamaitech.net/7/257/2422/01jan20071800/edocket.access.gpo.gov/2007/pdf/E7-20983.pdf

General exclusion order, limited exclusion order, and cease and desist orders (issued 10/19/07, as posted on EDIS) available at http://edisweb.usitc.gov/edismirror/337-565/Violation/285000/334056/461/8cee99.pdf