Current Trends of Recharger Litigation and Risk Mitigation
SPEAKERS Roland Tong, Esq.: Brooks Kushman, P.C. – Senior Patent Attorney Peter Bauman, Esq.: Tharpe & Howell, LLP – Senior Associate
Brief History Patent Issues Affecting Recharger Industry 1. Technology Involved 2. Manufacturer Designs 3. Toner Technology
Patent Infringement Cases Filed By HP Hewlett-Packard Company v. Ninestar Technology Co Ltd
Hewlett-Packard Company et al v. Microjet Technology Co, Ltd et al
Patent Infringement Cases Filed By Lexmark Lexmark International, Inc. v. Ink Technologies Printer Supplies, LLC
Patent Infringement Cases Filed By Epson Seiko Epson Corporation et al v. Abacus 24-7 LLC et al
Seiko Epson Corporation et al v. Inkjetmadness.com, Inc. et al
Seiko Epson Corporation et al v. E-Babylon, Inc. et al
Patent Infringement Cases Filed By Canon Canon Inc. v. GCC International Limited
Canon Inc., v. Densigraphix Kopi Inc.
Canon, Inc. v. Ninestar Image Int'l, Ltd.
Canon Inc. v. Clover Holdings, Inc. et al
U.S. patents asserted: 5,903,803 and 6,128,454
5,903,803 Claims 1. An electrophotographic image forming apparatus for forming an image on a recording material, comprising: an electrophotographic photosensitive drum; charging means for charging said photosensitive drum; developing means for developing a latent image formed on said photosensitive drum into a toner image; transfer means for transferring the toner image onto the recording material; fixing means for fixing the toner image on the recording material; a motor; a driving rotatable member for receiving a driving force from said motor; a twisted hole substantially coaxial with said driving rotatable member, said hole having a polygonal cross-section; a twisted prism projection provided at a longitudinal end of said photosensitive drum, wherein when said driving rotatable member rotates with said hole and projection engaged with each other, a rotational driving force is transmitted from said driving rotatable member to said photosensitive drum through engagement between said hole and said projection with said projection being pulled into said hole; and moving means for imparting relative movement between said hole and said projection in a longitudinal direction of said photosensitive drum.
6,128,454
6,128,454 4. A process cartridge which is detachably mountable to a main assembly of an electrophotographic image forming apparatus for forming an image on a recording material, the apparatus including a motor; and a driving rotatable member for transmitting a rotational driving force from said motor and having a twisted hole formed therein at a central portion thereof having a non-circular cross-section with a plurality of corner portions, said process cartridge comprising: an electrophotographic photosensitive drum; process means actable on said electrophotographic photosensitive drum; and a twisted projection provided at a longitudinal end of said electrophotographic photosensitive drum and having a noncircular cross-section with a plurality of corner portions, said twisted projection being engageable with the twisted hole, wherein the rotational driving force is transmitted from said driving rotatable member to said electrophotographic photosensitive drum by engagement between the twisted hole and said twisted projection, and wherein said twisted projection is urged toward the twisted hole when said driving rotatable member is rotated with said twisted projection being in engagement with the twisted hole when said process cartridge is mounted to the main assembly.
ITC PROCEEDINGS INITIATED BY OEMs
What is the US International Trade Commission (ITC)? 1.
Independent non-partisan federal agency
2.
Administers import injury investigations
3.
Oversees IP Based import investigations under Section 337 of the Tariff Act of 1930
4.
Patent cases involving imports that are alleged to infringe a US patent
5. Besides patent cases, Section 337 includes registered trademarks, copyrights, gray markets good cases, unfair competition, antitrust, and trade secret cases, products liability, violation of US environmental laws, child labor and other human rights violations
Elements of a Section 337 Case 1. Domestic industry related to the patent at issue – Significant investment in plant and equipment – Significant employment of labor or capital, or – Substantial investment in exploitation, eng’g, R&D • Manufacturing not required, sales and marketing not sufficient
– Nexus between its litigation expenses and licensing
2. Importation of products by respondent 3. Unfair act e.g. infringement of a valid patent
Remedies: 1. Exclusion Order directing US Customs to exclude goods from entering the US 2. General exclusion order, limited exclusion order 3. Cease and Desist Orders preventing sale 4. Distribution or infringing use of imported products 5. No monetary remedies
6. Violation of Orders can lead to civil penalties 7. Ninestar $11,110,000
Timeline: 1. File Complaint 2. Day 30- ITC decision to investigate 3. Day 75- set target date 4. Date 75-280: case development 5. Discovery, experts, motions, settlement conferences (3-4), summary determinations, hearing prep 6. Hearing day 280 7. Initial determination on liability day 395 8. Recommended determination on remedy 395-455 9. Remedy and public comment day 455-515 10. Target date 515 days 11. Presidential review 515-575 days 12. Final decision day 575 13. Appeal to federal circuit
Differences between: District Court and ITC 1. Types of relief a.Damages, injunctive relief in DC b.Exclusion and Cease and Desist Orders in ITC 2. Availability of jury trials a.No jury trials in ITC 3. Time limit of 12-16 months in ITC vs. 3 or more years in DC
Advantages of Going Though: ITC vs. District Court 1. 12-16 months decision 2. Name all known companies in one proceeding 3. Customs enforcement of the orders 4. Administrative law judges with experience in patent cases 5. The grant of permanent injunctions may be uncertain in district courts post eBay
Risk Management 1. Structuring for Asset Protection - Asset identification - Asset development - Asset protection - Entity Formation & Structuring - Maintaining Entity Protections
Risk Management 2. -
Risk Mitigation through Contracts Vendor Agreements Supplier Agreements Customer Agreements Real Estate Agreements
Risk Management 3. -
Available Insurance Advertising Injury Specialty IP Related Breach of Contract Attorney Fee Personal Guarantee
**Ongoing Consultation with Broker**
Risk Management 4. -
Building Value to resolve disputes Customer Lists Distribution Network Recharging Equipment Derivative Works Pricing Lists Component Suppliers
Receiving a Cease & Desist Demand -
What to do first When to get counsel involved What type of counsel to hire Measures to protect evidence
Receiving an ITC Complaint or Lawsuit -
What to do first When to get counsel involved What type of counsel to hire Measures to protect evidence
Resolution of ITC Complaint or Lawsuit -
Cross-Licensing Litigating Efficiently Inventory Issues Continuing Jurisdiction of Court
Thank you - Questions? Roland Tong Brooks Kushman, PC 601 S. Figueroa Street, Suite 2080 Los Angeles, CA 90017-5726 Main: (213) 622-3003 | Direct: (213) 622-3096 | Fax: (213) 622-3053 rtong@brookskushman.com www.brookskushman.com Peter Bauman Tharpe & Howell, LLP 15250 Ventura Blvd., 9th Floor Sherman Oaks, California 91403 Main: (818) 205-9955 Fax (818) 205-9944 pbauman@tharpe-howell.com www.tharpe-howell.com; www.commercialcounselor.com