Printing Consumables Enterprises Won US 337 Investigation

Final Determination of Non-Infringement

Helen Duan; Libby Zheng

In the case of 337-1106 in 337 investigation brought  by CANON against 49 respondents, after the administrative law

judge (“ALJ”)   made the initial determination (“ID”)  to find non-infringement on March 13, 2019, on May 20, 2019, 

United States International Trade Commission (USITC) made a review judgment to affirm the initial determination of the 

administrative law judge (“ALJ”), and finally the Commission found no violation of section 337 in Print-Rite, Niestar, 

ASTER and other enterprises involved in the case. The investigation was terminated.

The review judgment of USITC will be the final determination. This is an important victory in decades between 

consumables industry and OEM IP dispute. In a sense, it is a milestone. Innopat is pleased  to participate in the 337

investigation on behalf of Print-Rite. This victory has greatly inspired Chinese printing consumables enterprises in 

responding positively to overseas intellectual property disputes and actively defending their rights. It will also be of great 

significance for other Chinese enterprises/industries to respond to the US 337 investigation positively, professionally and 

successfully.

1. Case History：

On February 28, 2018, just two days before the Chinese Lunar  New Year, CANON filed 337 investigations with USITC,

accusing 49 companies of infringing their invention patents. The defendants included Print-Rite, Niestar, ASTER and 

other printing consumable companies, which attracted major media attention within the industry.

Products involved

 The patent involved in this case continues on from Dongle gear patent in the 337-918 cases filed by CANON in 2014.

CANON has expanded their protection of 337-918 patents involved, by changing the expression of claims and by 

utilizing the CONTINUATION practice of the patent system of the United States of America, and initiate this 337-1106

investigation. 

CANON-related patent drawings

On March 26, 2018, USITC instituted the case  known as "337-1106". After receiving the complaint, most of the defendants choose default. However, Print-Rite responded to this complaint  immediately. And after having a comprehensive analysis with Innopat, it was firmly believed that their products were not infringed and decided to respond to the investigation. This investigation lasted more than 12 months. On March 13, 2019, the USITC Administrative Law Judge made a initial  determination which was in the favour of the defendants, and decided the defendants did not infringe upon the patent therefore terminating  the investigation.

On March 25, 2019, CANON requested USITC to review the initial  determination. They believed that the scope of protection for interpreting claims should not be narrowed down. On April 29, 2019, the USITC decided to extend the time limit to decide whether to review the initial determination.

On 1st May 2019, Anna G. Eshoo, a U.S. congressman, wrote to USITC, noting that the 337-1106 case had a wide impact on the U.S. economy and global competitiveness. USITC played an important role in enabling U.S. companies (such as HP) to compete and succeed on the basis of the rule of law in the United States. HP relied on patent licensing agreements with CANON to use the patents involved in the 337-1106 case. These patents were very crucial in enabling HP and CANON's commercial success, and they benefited American consumers and businesses vastly. Therefore, USITC has been advised to consider the broad economic impact of carbon cartridge patents on the United States, when reviewing the initial determination.

After the congressman sent the letter, the people in the industry feared that it might affect the USITC's review judgment.

On May 6, 2019, USITC formally decided to review the initial  determination. On May 20, 2019, two weeks after deciding to review, USITC made the decision to affirm  the initial determination of the Administrative Law Judge, that is to affirm the non-infringement of the respondents, and terminate the investigation

2. Summary and recommendations

The 337-1106 case lasted nearly 15 months. Under the circumstances of the Sino-US economic and trade negotiations and the complex political and economic factors between China and the United States, USITC finally made a favorable decision for Chinese printing consumables manufacturers and their American retailers. We believe that the 337-1106 case also reflects the professionalism, efficiency and transparency of the USITC. In regards to overseas intellectual property disputes, Chinese enterprises may achieve success in intellectual property disputes by respecting foreign intellectual property rights and litigation systems, understanding the rules of the game and actively participating in the response. Over the years, in regards to overseas intellectual property disputes, Print-Rite professional response is a good example. The "NoTwist" non-twisted gear cartridge and PR2 gear cartridge launched by Print-Rite have successfully broken through the relevant General Exclusion Orders in 337-829 and 337-918, and have become a classic in US, following the successful case in the industry by approval of the U.S. Customs. Regarding the success of 337-1106 cases, Mr. He Liangmei, chairman of Print-Rite Holding , comments that: there is nothing wrong with the original manufacturer enforcing their legitimate rights and interests through legal actions such as patent litigation or 337 investigation. Printing consumables industry is an organic relationship between the original printer and aftermarket printing companies. We will continue to insist  innovations and respect intellectual property rules whilst safeguarding our rights legally.

In 337-1106 cases, Chinese printing consumables manufacturers such as Print-Rite, Niestar and ASTER made active response the investigation,  esp, timely participating in discovery, markman hearing and mediation etc. . Despite challenging efforts, the products involved in the enterprise finally won the victory of non-infringement.

Chinese defendant enterprises can respond by domestic lawyer/agent teams cooperating with foreign lawyers. Domestic intellectual property professional teams are familiar with the technology and products of enterprises. Foreign lawyer teams are familiar with foreign intellectual property system and litigation system, and strong alliance is vital in making appropriate response strategies and controlling the cost of responding. In 337-1106 cases, the INNOPAT Intellectual Intelligence Specialist has worked closely with American lawyers, especially in the field of non-infringement, invalid analysis and other substantive work. It has saved a lot of time and cost for the client . In particular, the final ruling is in line with INNOPAT expectation at the filing stage a year ago.  In particular, while assisting Print-Rite in responding to non-infringement claims, INNOPAT also cooperated with Print-Rite Engineering Department to discuss and evaluate innovative design schemes. In a short time period, Print-Rite made a CANON accepted non-infringement solution (PR3) to launch in the U.S. market in the shortest possible time ever, which eased customers' worries and avoided wasting unnecessary time.

The Innovative Design（PR3）

          Helen Duan of Innopat went to the United States to attend Markman hearings in 337-1106 cases

In addition, for the final decision of USITC, we noticed that CANON has appeal  to the United States Court of Appeals for the Federal Circuit, and we will focus on the progress of the case.