33 Hit by Canon’s Latest Complaint

It has happened again. For the third time in a year, Canon is pursuing more manufacturers, distributors and sellers of printer cartridges, claiming they violate Canon’s patents and infringe their intellectual property.

In June 2013, Canon was granted a general exclusion order by the International Trade Commission in the United States preventing companies from importing cartridges that contained the Canon-patented twisted drum gears. Then in January this year, Canon USA filed lawsuits against 18 printer cartridge remanufacturers and other aftermarket suppliers for patent infringement. This time it was over the drum gear assemblies and dongle gears used in many other Canon printer cartridges.

The industry has been nervous, fearing the OEM may take further aggressive action before the United States International Trade Commission.

And now it has happened.

Canon today announced it has filed a complaint with the U.S. International Trade Commission (USITC) against 33 manufacturers, distributors and sellers of toner cartridges for infringement of nine patents (Nos. 8,135,304; 8,280,278; 8,369,744; 8,565,640; 8,630,564; 8,676,085; 8,676,090; 8,682,215; and 8,688,008). The patents related to a “dongle type rotating arm on the OPC drum used in more than 50 models of Canon and Hewlett-Packard laser beam printers.

According to the legal document, Canon requests the Commission to issue a general exclusion order, or, at the very least, a limited exclusion order, forbidding entry into the United States of all toner cartridges and components that infringe the asserted patents.

In its January case, Canon filed complaints against 18 companies in the U.S. District Court for the Southern District of New York. Now, the printer vendor has added 15 more companies to the lawsuit that “additionally allege infringement of U.S. Patent Nos. 8,433,219; 8,437,669; and 8,494,411”.

An extract of the documents filed by Canon with the ITC, secured by Recycling Times are available at: http://issuu.com/recyclingtimes/docs/canon_itc_extract 

According to these documents the proposed respondents named in the complaints fall into five general groups:

A. Ninestar Respondents
a. Ninestar Image Tech Limited
b. Zhuhai Seine Technology Co., Ltd.
c. Ninestar Technology Company, Ltd.
d. Seine Tech (USA) Co., Ltd.
e. Seine Image Int’l Co., Ltd.
f. Ninestar Image Tech, Ltd.
g. Seine Image (USA) Co., Ltd.
h. Nano Pacific Corporation

B. Aster Respondents
a. Aster Graphics, Inc.
b. Jiangxi Yibo E-tech Co., Ltd.
c. Aster Graphics Co., Ltd.

C. Print-Rite Respondents
a. Print-Rite Holdings Ltd.
b. Print-Rite N.A., Inc.
c. Union Technology Int’l (M.C.O.) Co. Ltd.
d. Print-Rite Unicorn Image Products Co. Ltd.
e. Innotex Precision Ltd.

D. Other Manufacturer Respondents
a. International Laser Group, Inc.
b. Shenzhen ASTA Official Consumable Co., Ltd.

E. Other Retailer Respondents
a. Acecom, Inc. – San Antonio
b. ACM Technologies, Inc.
c. American Internet Holdings, LLC
d. The Supplies Guys, LLC
e. Do It Wiser LLC
f. Grand Image Inc.
g. Green Project, Inc.
h. Ink Technologies Printer Supplies, LLC
i. Katun Corporation
j. LD Products, Inc.
k. Linkyo Corp.
l. Nectron International, Inc.
m. Online Tech Stores, LLC
n. Printronic Corporation
o. Zinyaw LLCRemanufacturers

Industry analysts and commentators are already predicting today’s action taken by the OEM will most likely have a huge impact on the remanufacturing industry in North America. Cartridge remanufacturers are being advised to consult with their parts suppliers for advice and non-infringing solutions.

In quick response, Arnald Ho, Chairman of the Print-Rite group of companies told Recycling Times “We always respect the patents of all parties. We have developed over 2000 patents of our own in the last 10 years. We are trying to resolve this case professionally and will update the situation accordingly.”

Legal issues are at the core of the aftermarket and will be discussed and debated at the RT Imaging Summit being held at the new South Point Casino in Las Vegas on May 29 and 30. Two of the industry’s most experienced patent attorneys in North America, Steve Adkins and Ed O’Connor, will engage with the aftermarket industry to help clarify the role of the ITC, and find solutions for this and other actions by the OEMs. More information is available at www.iRecyclingTimes.com

Highly respected market analyst Steve Weedon, CEO of Discovering Discover Imaging Products, provided his insights on this case before the ITC complaint:
http://www.irecyclingtimes.com/News-Detail?news_column_id=17&news_id=2810