Canon Reviews its Options Over its Recent US Court Loss

Canon Reviews its Options Over Court Loss in USA

In a statement published on its website, Canon has spoken for the first time since it lost its appeal in the US Federal Circuit on April 20, 2020.

The U.S. Court of Appeals for the Federal Circuit affirmed the U.S. International Trade Commission’s (USITC) determination of noninfringement in Investigation No. 337-TA-1106, which pertains to certain aftermarket toner cartridges and photosensitive drum units sold for use in Canon and HP laser beam printers.

Canon makes it very clear that it believes the USITC’s interpretation of the patent claims to be overly narrow and is considering available options for seeking review of the Federal Circuit’s decision.

What is the history of this case?

• 

  Canon’s patented gear is able to swivel and rotate radially

  In February 2018, Canon asked the USITC to open a 337 investigation into infringement of its toner cartridge patents, particularly related to the swivel gear coupling, or dongle gear, attached to the OPC drum in the cartridge. A total of 49 respondents were named in this action together with lawsuits in US federal courts. It should be noted that most of these respondents backed down, stopped making, marketing, shipping and selling the products identified by Canon. However, certain companies did not capitulate including Ninestar, Print-Rite and Aster and their various subsidiaries as well as LD Products and The Supplies Guys. Each of these companies was using a gear that did not “swivel” and argued that their own patented alternatives respected Canon’s patents. Canon disagreed and urged the USITC to include the gears that did not swivel as being part of their swivel gear patents;

• 

  An aftermarket designed gear that does not swivel but can contract inside the drum gear

  On March 13, 2019, Administrative Law Judge (ALJ) Dee Lord issued her initial determination that the aftermarket companies had not infringed Canon’s patents;

• On March 25, 2019, Canon petitioned the USITC to review the decision made by ALJ Lord. On May 6, the USITC agreed to review the summary determination of non-infringement;
• On May 20, 2020, the USITC issued a determination that it would uphold and support the initial determination. In other words, they said that the aftermarket cartridges di not infringe Canon’s patents. By the end of May, Can appealed the ITC’s final determination with the US Federal Circuit;
• On September 9, 2019, Canon filed its opening briefs, and on November 8, the USITC provided its initial briefs along with separate briefs from Ninestar, Print-Rite and Aster. On December 10, 2019, Canon provided additional briefs in response to those from the USITC and the aftermarket companies;
• On April 10, 2020, three judges from the Federal Circuit heard the separate oral briefs from Canon, the USITC and the Aftermarket (Ninestar, Aster and Print-Rite). This was conducted over the phone because the coronavirus prevented the parties from attending the courtroom;
• On April 20, 2020, all three judges ruled unanimously in favor of the USITC (and the aftermarket) and stated Canon had failed to prove its case. In a single word, “Affirmed” the judgement was made that the USITC determination would be upheld.

What’s Next for Canon?

Canon continues to believe that the ITC’s interpretation of the patent claims is overly narrow, and is considering available options for seeking review of the Federal Circuit’s decision. Canon claims it remains committed to pursuing legal enforcement against those it believes do not respect Canon’s intellectual property.

Industry analysts including Actionable Intelligence suggest there are three options open to Canon at this stage:

1. Canon could petition the Federal Circuit for a rehearing. While this is legally possible, the Federal Circuit warns petitions for rehearing are often unsuccessful;
2. Canon could petition the Federal Circuit for an en banc hearing where the full panel of judges is required to participate in the matter;
3. Canon could go straight to the Supreme Court, the highest court in the land. The Supreme Court receives thousands of such petitions each year and grants certiorari (or a hearing) to just a few of these. Canon may be hoping to get such a hearing.

RT’s resident cartoonist Berto should have the last word at this point: “Hang on to your dongle gears!”