ITC to Consider Modifying Patent Orders for Ninestar U.S. & Epson Ink Cartridges
The International Trade Commission has instituted proceedings to determine whether certain ink cartridges infringe any of the patent claims included in the general exclusion order or a cease and desist order issued in the Section 337 patent-based investigation of certain ink cartridges and components thereof (337-TA-565), and if the orders should be modified.
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General Exclusion, Cease and Desist Orders, Etc. Issued in October 2007
In October 2007, pursuant to an investigation based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corporation of Japan (collectively, Epson), the ITC issued a general exclusion order which excluded from entry for consumption, entry for consumption from a foreign-trade zone (FTZ), or withdrawal from a warehouse for consumption, certain ink cartridges and components thereof for the remaining term of the violated patents, except under license of the patent owner or as provided by law.
The ITC 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 claims of certain patents and directed to Ninestar Technology Company, Ltd. (Ninestar U.S), among others.
(The ITC also issued a limited exclusion order directed at eight defaulting respondents1. The limited exclusion order is not part of the subject proceedings.)
Ninestar and Epson Requested Proceedings to Modify Orders
In December 2010, Ninestar Technology Co., Ltd. and Ninestar Technology Company, Ltd. (collectively, Ninestar) filed a joint request for an advisory opinion proceeding and a petition for modification of the general exclusion order and a cease and desist order. In February 2011, Epson also filed a petition for modification of the general exclusion order and the cease and a desist order issued to Ninestar U.S.
After examining the submissions by Ninestar and Epson, the ITC has determined to institute consolidated advisory opinion and modification proceedings to determine whether Ninestar’s R-Series ink cartridges infringe any of the patent claims included in the general exclusion order or the cease and desist order issued to Ninestar U.S. in the investigation and what, if any, modifications to the general exclusion order and/or the cease and desist order issued to Ninestar U.S. are appropriate.
1The limited exclusion order excludes from entry ink cartridges that are covered by certain patents and 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, for the remaining term of the patents, except under license of the patent owner or as provided by law.
(See ITT’s Online Archives or 10/26/07 news, 07102620, for BP summary of the ITC's issuance of these general exclusion and cease and desist orders.
See ITT’s Online Archives or 08/21/09 news, 09082125, for BP summary of ITC's 2009 determination to levy over $21 million in civil penalties against Ninestar and others for violations of the cease and desist orders.)
ITC contact - Michael Haldenstein (202) 205-3041
(FR Pub 03/24/11, Inv. No. 337-TA-565)