UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. Before the Honorable David P. Shaw Administrative Law Judge
In the Matter of CERTAIN TONER CARTRIDGES AND COMPONENTS THEREOF
Investigation No. 337-TA-918
CANON’S MOTION FOR PARTIAL TERMINATION OF THE INVESTIGATION WITH RESPECT TO U.S. PATENT NOS. 8,369,744, 8,565,640, 8,676,085, AND 8,135,304 Pursuant to 19 C.F.R. § 210.21(a), Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) hereby move for partial termination of the investigation with respect to four of the nine patents that Canon asserted in its complaint. Specifically, Canon seeks to partially terminate the investigation with respect to claim 1 of U.S. Patent No. 8,369,744 (the “’744 patent”), claim 1 of U.S. Patent No. 8,565,640 (the “’640 patent”), claims 1-4 of U.S. Patent No. 8,676,085 (the “’085 patent”), and claim 1 of U.S. Patent No. 8,135,304 (the “’304 patent”) based on Canon’s withdrawal of its allegations relating to these claims, which include all of the asserted claims of these four patents. Ground Rule 6.a requires complainants asserting more than four patents or thirty-two claims to file biweekly declarations detailing their efforts to reduce the number of asserted patents and claims. In its complaint, Canon asserted nine patents (from six patent families) and thirty-two claims, with those nine patents having ten inventors between them. If Canon’s motion is granted, five patents (from three patent families) and twenty-five asserted claims will remain at issue in the investigation, with the remaining asserted patents having only four named inventors between them. Terminating the investigation with respect to the asserted claims of the
’744, ’640, ’085, and ’304 patents therefore will further the objective of Ground Rule 6.a, streamline the investigation, and conserve the resources of the private parties, the Office of Unfair Import Investigations (“Staff”), and the Commission. Commission Rule 210.21(a) states: Any party may move at any time prior to the issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to terminate an investigation in whole or in part as to any or all respondents, on the basis of withdrawal of the complaint or certain allegations contained therein, or for good cause other than the grounds listed in paragraph (a)(2) of this section. … The presiding administrative law judge may grant the motion in an initial determination upon such terms and conditions as he deems proper. 19 C.F.R. § 210.21(a). It has long been the Commission’s practice that “in the absence of extraordinary circumstances, termination of the investigation will be readily granted to a complainant during the prehearing stage of an investigation.” Certain Oscillating Sprinklers, Sprinkler Components, and Nozzles, Inv. No. 337-TA-448, Order No. 26 at 2 (Sept. 25, 2001) (citations omitted). Accordingly, partial termination with respect to a given patent or patent claims is routinely granted at the complainant’s request. See, e.g., Certain Omega-3 Extracts From Marine or Aquatic Biomass and Products Containing the Same, Inv. No. 337-TA-877, Order No. 11 (July 24, 2013); Certain Electronic Devices, Including Wireless Communication Devices, Tablet Computers, Media Players, and Televisions, and Components Thereof, Inv. No. 337-TA-862, Order No. 63 (Sept. 9, 2013); Certain Laminated Floor Panels, Inv. No. 337-TA-545, Order No. 30 (Apr. 3, 2006); Certain Digital Processors and Digital Processing Systems, Components Thereof, and Products Containing Same, 337-TA-529, Order No. 17 (July 8, 2005); Certain Semiconductor Timing Signal Generator Devices, Components Thereof, and Products Containing Same, Inv. No. 337-TA-465, Order No. 25 (July 9, 2002). Here, the investigation is -2-
still in its early stages of fact discovery, and there are no extraordinary circumstances that would warrant denial of Canon’s motion. In accordance with 19 C.F.R. § 210.21(a), Canon states that there are no agreements, written or oral, express or implied, between the parties concerning the subject matter of this investigation as it relates to Canon’s present motion for partial termination.1 For the foregoing reasons, Canon respectfully requests that the ALJ grant its motion for partial termination of the investigation with respect to claim 1 of the ’744 patent, claim 1 of the ’640 patent, claims 1-4 of the ’085 patent, and claim 1 of the ’304 patent, and issue an initial determination terminating the investigation with respect to these patents and claims. GROUND RULE 5.e CERTIFICATION Canon certifies that on July 30, 2014, it notified the Staff and counsel for all respondents who have responded to Canon’s complaint of its intent to file this motion and asked whether anyone opposes. The respondents who have responded to Canon’s complaint do not oppose this motion. The Staff stated it would reserve its position until after the motion is filed.
1
Canon has settled various district court actions asserting the same patents asserted in this investigation, but those settlements pertain to the district court actions only and do not resolve or otherwise impact any aspect of this investigation. -3-
Dated: August 1, 2014
Respectfully submitted,
/s/ Edmund J. Haughey Nicholas M. Cannella Michael P. Sandonato C. Austin Ginnings FITZPATRICK, CELLA, HARPER & SCINTO 1290 Avenue of the Americas New York, New York 10104-3800 Phone: 212-218-2100 Fax: 212-218-2200 Edmund J. Haughey Stephen E. Belisle Seth E. Boeshore John E. Nappi FITZPATRICK, CELLA, HARPER & SCINTO 975 F Street, N.W. Washington, D.C. 20004 Phone: 202-530-1010 Fax: 202-530-1055 Counsel for Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc.
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UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before the Honorable David P. Shaw Administrative Law Judge
In the Matter of CERTAIN TONER CARTRIDGES AND COMPONENTS THEREOF
Investigation No. 337-TA-918
[[PROPOSED]] ORDER GRANTING CANON’S MOTION TO PARTIALLY TERMINATE THE INVESTIGATION WITH RESPECT TO U.S. PATENT NOS. 8,369,744, 8,565,640, 8,676,085, AND 8,135,304 On August 1, 2014, Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) moved, pursuant to Commission Rule 210.21, to partially terminate this investigation with respect to U.S. Patent Nos. 8,369,744 (the “’744 patent”), 8,565,640 (the “’640 patent”), 8,676,085 (the “’085 patent”), and 8,135,304 (the “’304 patent”). The motion is not opposed by the respondents who have responded to Canon’s complaint. Commission Rule 210.21(a)(1) provides: Any party may move at any time prior to the issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to terminate an investigation in whole or in part as to any or all respondents, on the basis of withdrawal of the complaint or certain allegations contained therein, or for good cause other than the grounds listed in paragraph (a)(2) of this section. A motion for termination of an investigation based on withdrawal of the complaint, or for good cause, shall contain a statement that there are no agreements, written or oral, express or implied between the parties concerning the subject matter of the investigation, or if there are any agreements concerning the subject matter of the investigation, all such agreements shall be identified, and if written, a copy shall be filed with the Commission along with the motion.
Canon seeks to terminate the investigation in part, based on the withdrawal of its allegations relating to the asserted claims of the ’744, ’640, ’085, and ’304 patents. See Motion at 1. And in accordance with Commission Rule 210.21(a)(1), Canon states that there are no agreements, written or oral, express or implied, between the parties concerning the subject matter of this investigation as it relates to Canon’s motion. Id. at 3. Canon’s motion complies with the provisions of Commission Rule 210.21(a)(1). Also, termination of this investigation with respect to the ’744, ’640, ’085, and ’304 patents will further the objective of Ground Rule 6.a, streamline the investigation, and conserve the resources of the private parties, the Office of Unfair Import Investigations, and the Commission. Further, there are no extraordinary circumstances that warrant denial of the motion. Accordingly, it is the INITIAL DETERMINATION of the undersigned that Canon’s motion is granted. Pursuant to 19 C.F.R. § 210.42(h), this initial determination shall become the determination of the Commission unless a party files a petition for review of the initial determination pursuant to 19 C.F.R. § 210.43(a), or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review of the initial determination or certain issues contained herein.
____________________________ David P. Shaw Administrative Law Judge
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CERTIFICATE OF SERVICE I hereby certify that on August 1, 2014, the foregoing CANON’S MOTION FOR PARTIAL TERMINATION OF THE INVESTIGATION WITH RESPECT TO U.S. PATENT NOS. 8,369,744, 8,565,640, 8,676,085, AND 8,135,304 were served, pursuant to the Commission’s Rules, on the following parties. /s/ Seth E. Boeshore
The Honorable Lisa R. Barton Secretary U.S. INTERNATIONAL TRADE COMMISSION 500 E Street SW, Room 112A Washington, DC 20436
Via EDIS
The Honorable David P. Shaw Administrative Law Judge U.S. INTERNATIONAL TRADE COMMISSION 500 E Street SW, Room 317-O Washington, DC 20436
Via Hand Delivery
Patricia Chow Attorney-Advisor U.S. INTERNATIONAL TRADE COMMISSION 500 E Street SW Washington, DC 20436
Via Email patricia.chow@usitc.gov
James Wiley Office of Unfair Import Investigations U.S. INTERNATIONAL TRADE COMMISSION 500 E Street SW, Suite 401 Washington, DC 20436
Via Email james.wiley@usitc.gov
For ACM Technologies, Inc.: Merritt R. Blakeslee THE BLAKESLEE LAW FIRM 1250 Connecticut Avenue NW Suite 700 Washington, DC 20036
Via Email mrb@blakeslee-law.com
For Do It Wiser LLC: Kenneth M. Motolenich-Salas Gallagher & Kennedy, P.A. 2575 East Camelback Road Phoenix, AZ 85016-9225
Via Email ken.motolenich@gknet.com
For International Laser Group, Inc.: Charles S. Barquist MORRISON & FORESTER LLP 707 Wilshire Boulevard, Suite 600 Los Angeles, CA 90017-3543
Via Email ILG337@mofo.com
For Jiangxi Yibo E-Tech Co., Ltd., Aster Graphics Co., Ltd., Aster Graphics, Inc., The Supplies Guys, LLC, and American Internet Holdings, LLC: Barbara A. Murphy FOSTER, MURPHY, ALTMAN & NICKEL, PC 1899 L Street NW, Suite 1150 Washington, DC 20036
Via Email FM-Aster-918@fostermurphy.com
For Katun Corporation: Bryan J. Vogel ROBINS, KAPLAN, MILLER & CIRESI LLP 601 Lexington Avenue, 34th Floor New York, NY 10022
Via Email Katun-337-TA-918@rkmc.com
For Nectron International, Inc.: Mario G. Ceste LAW OFFICES OF MARIO G. CESTE, LLC P.O. Box 82 Wallingford, CT 06492
Via Email mgclaw@snet.net
For Ninestar Image Tech Limited, Zhuhai Seine Technology Co., Ltd., Ninestar Technology Company, Ltd., Seine Tech (USA) Co., Ltd., Seine Image Int’l Co., Ltd., Ninestar Image Tech, Ltd., Seine Image (USA) Co., Ltd., Nano Pacific Corporation, Linkyo Corp., and Ink Technologies Printer Supplies, LLC: Gary M. Hnath MAYER BROWN LLP 1999 K Street NW Washington, DC 20006
Via Email Ninestar-MB-ITC918@mayerbrown.com
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For Print-Rite Holdings Ltd., Print-Rite N.A., Inc., Union Technology International (M.C.O.) Co. Ltd., Print-Rite Unicorn Image Products Co. Ltd., Innotex Precision Ltd., and LD Products, Inc.: Steven E. Adkins ALLEN & OVERY LLP 1101 New York Avenue NW Washington, DC 20005
Via Email AO918@AllenOvery.com
Shenzhen ASTA Official Consumable Co., Ltd. E Building, Huilongpu Industrial Area AI'xin Road Longgang District, Shenzhen, China
Via First Class Mail
Acecom, Inc. - San Antonio 14034 Nacogdoches Road San Antonio, Texas 78247
Via First Class Mail
Grand Image Inc. 19909 Harrison Avenue City of Industry, California 91789
Via First Class Mail
Green Project, Inc. 15335 Don Julian Road Hacienda Heights, California 91745
Via First Class Mail
Online Tech Stores, LLC 500 Damonte Ranch Parkway, Suite 944 Reno, Nevada 89521
Via First Class Mail
Printronic Corporation 1621 East Saint Andrew Place Santa Ana, California 92705
Via First Class Mail
Zinyaw LLC 14781 Memorial Drive, Suite 1359 Houston, Texas 77079
Via First Class Mail
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