Certain Ink Cartridges and Components Thereof; Issuance of a General Exclusion Order and Cease and Desist Orders; Termination of Investigation

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to issue: (1) A general exclusion order (“GEO”) barring entry of certain ink cartridges and components thereof that infringe the patents asserted in this investigation; and (2) cease and desist orders (“CDOs”) directed against two domestic defaulting respondents. The Commission has terminated this investigation.

FOR FURTHER INFORMATION CONTACT:

Michael Liberman, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone (202) 205-3115. Copies of non-confidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone (202) 205-2000. General information concerning the Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (“section 337”), on January 27, 2015, based on a complaint filed by Epson Portland Inc., Epson America, Inc. and Seiko Epson Corporation (collectively, “Epson,” or Complainants). 80 FR 4314-16 (Jan. 27, 2015). The complaint alleges a violation of section 337 by reason of infringement of certain claims of U.S. Patent No. 8,366,233 (“the '233 patent”); U.S. Patent No. 8,454,116 (“the '116 patent”); U.S. Patent No. 8,794,749 (“the '749 patent”); U.S. Patent No. 8,801,163 (“the '163 patent”); and U.S. Patent No. 8,882,513 (“the '513 patent”) (collectively, the “Asserted Patents”) by numerous respondents. Id. In particular, the notice of investigation named the following nineteen entities as respondents: Zhuhai Nano Digital Technology Co., Ltd. of Zhuhai, China; Nano Business & Technology, Inc. of Lake Oswego, Oregon; Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. of Zhuhai, China; Huebon Co. Ltd. of Hong Kong; Chancen Co., Ltd. of Hong Kong; Zhuhai Rich Imaging Technology Co., Ltd. of Zhuhai, China; Shanghai Orink Infotech International Co., Ltd. of Shanghai, China; Orink lnfotech International Co., Ltd. of Hong Kong; Zinyaw LLC of Houston, Texas; Yotat Group Co., Ltd. of Hong Kong; Yotat (Zhuhai) Technology Co., Ltd. of Zhuhai, China; Ourway Image Co., Ltd. of Zhuhai, China; Kingway Image Co., Ltd. of Zhuhai, China; Zhuhai Chinamate Technology Co., Ltd. of Zhuhai, China; InkPro2day, LLC of Los Angeles, California; Dongguan OcBestjet Printer Consumables Co., Ltd. of Dongguan, China; OcBestjet Printer Consumables (HK) Co., Ltd. of Hong Kong; Aomya Printer Consumables (Zhuhai) Co., Ltd. of Guangdong, China; and Zhuhai Richeng Development Co., Ltd. of Zhuhai, China. The Commission's Office of Unfair Import Investigations (“OUII”) was also named as a party.

On June 18, 2015, the ALJ issued an initial determination (“ID”) (Order No. 9) finding in default respondents Huebon Co.; Ltd., Chancen Co., Ltd.; Yotat Group Co., Ltd.; Ourway Image Co., Ltd.; Shanghai Orink Infotech International Co., Ltd.; Orink Infotech International Co., Ltd.; Kingway Image Co., Ltd.; Zhuhai Chinamate Technology Co., Ltd.; Yotat (Zhuhai) Technology Co., Ltd.; Zhuhai Richeng Development Co., Ltd.; Dongguan OcBestjet Printer Consumables Co., Ltd.; OcBestjet Printer Consumables (HK) Co., Ltd.; Zinyaw LLC; InkPro2day; LLC, Aomya Printer Consumables (Zhuhai) Co., Ltd.; Zhuhai National Resources & Jingjie Imaging Products Co., Ltd.; and Zhuhai Rich Imaging Technology Co., Ltd. (collectively, “the Defaulting Respondents”) (not reviewed Jul. 10, 2015). On July 8, 2015, the ALJ issued an ID (Order No. 10) terminating the investigation as to remaining named respondents Zhuhai Nano Digital Technology, Co., Ltd. (China) and Nano Business and Technology, Inc. (USA) based on a settlement agreement and consent order (not reviewed Aug. 5, 2015).

All of the respondents in this investigation have either defaulted or entered into consent orders that have been approved by the Commission. On September 16, 2015, the ALJ issued an ID (Order No. 11) partially terminating the investigation based on Epson's withdrawal of certain claims (not reviewed Oct. 15, 2015). Claims 1 and 10 of the '233 patent; claims 9, 14, 18, and 21 of the '116 patent; claims 1, 18, 49, and 60 of the '749 patent; claims 1 and 6 of the '163 patent; and claims 14, 15, and 19 of the '513 patent remain pending in this investigation. ID at 3.

On August 31, 2015, Epson filed a motion for summary determination of violation by the Defaulting Respondents. The IA filed a response in support of the motion on September 11, 2015. No respondent filed a response to the motion.

On October 28, 2015, the ALJ issued an ID (order No. 12) granting Complainants' motion for summary determination. No party petitioned for review of the ID. The Commission determined to review-in-part the subject ID and, on review, to affirm the ID with certain modifications to the ALJ's findings regarding the importation requirement. Notice of Commission Determination To Review an ID in Part and, on Review, to Affirm a Finding of a Violation of Section 337 dated December 14, 2015 (“Commission Notice”) at 2. See 80 Fed. Reg. 79097-99 (Dec. 18, 2015). The Commission's determination resulted in a finding of a violation of section 337.

The Commission requested written submissions on remedy, public interest, and bonding. Id. Complainants and OUII timely filed their submissions pursuant to the Commission Notice. No other parties filed submissions in response to the Commission Notice. No submissions were filed by the public.

Having reviewed the submissions filed in response to the Commission's Notice and the evidentiary record, the Commission has determined that the appropriate form of relief in this investigation is: (a) A GEO prohibiting the unlicensed importation of certain ink cartridges and components thereof covered by one or more of claims 1 and 10 of the '233 patent; claims 9, 14, 18, and 21 of the '116 patent; claims 1, 18, 49, and 60 of the '749 patent; claims 1 and 6 of the '163 patent; and claims 14, 15, and 19 of the '513 patent; and (b) CDOs directed against respondents Zinyaw and InkPro2day.

The Commission has further determined that the public interest factors enumerated in subsections (d)(l) and (f)(1) (19 U.S.C. 1337(d)(l), (f)(1)) do not preclude issuance of the above-referenced remedial orders. Additionally, the Commission has determined that a bond in the amount of one hundred (100) percent of the entered value is required to permit temporary importation of the articles in question during the period of Presidential review (19 U.S.C. 1337(j)). The Commission has also issued an opinion explaining the basis for the remedy. The investigation is terminated.

The Commission's orders and the record upon which it based its determination were delivered to the President and to the United States Trade Representative on the day of their issuance. The Commission has also notified the Secretary of the Treasury of the orders.

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).