There are similarities between the 2014 ('918) ITC investigation and the new 2018 ('1106) ITC investigation as both involve the dongle gear assembly used in certain Canon original and aftermarket alternative laser cartridges. The new complaint from Canon is built around nine recently obtained patents that were spawned from the 8,280,278 B2 "parent" patent which was at the core of the 2014 investigation.
Our purpose here is to provide a brief recap of the '918 investigation, its named respondents, and to identify how each of them were ultimately dispositioned in the months leading up to the completion of that investigation on August 31, 2015. We've then provided a summary table of the '1106 respondents and identified which of those were also previously named respondents in the 2014 investigation.
The main point here, whether this experience was desirable or not, is that the previously named respondents now have knowledge of the ITC investigation process, the format it takes, and the necessity for complying with (and dealing with the pressure of) the frequent deadlines for required responses. This experience will be valuable in terms of shaping how the respondents finalize their strategies for defending their technology and their future position in the marketplace.
The 2014 Investigation (377-TA-918)
In the Canon initiated 2014 Dongle Gear ITC Investigation (337-TA-918) there were 33 named respondents. These were ultimately dispositioned as follows:
1. Between the dates of November 4, 2014 and April 3, 2015 the Administrative Law Judge (ALJ) issued initial determinations (ID's) terminating the investigation as to 15 of the respondents based on consent orders.
2. On August 1, 2014 the ALJ issued an ID terminating the investigation on two respondents based on Canon's withdrawal of its complaint, and;
3. On April 1, 2015 one further ID was issued terminating the investigation as a consequence of a corporate dissolution of a named respondent.
4. Ten ID's were issued between August 25, 2014 and November 17, 2014 that dealt with respondents who defaulted.
5. The remaining five respondents, each of which acknowledged and stipulated they had failed to act within the meaning of a Commission Rule, (as a result of not filing a pre-hearing statement and brief as required), meant they had no standing to contest Canon's evidence and arguments.
The Named Respondents 2014 ('918) ITC Dongle Gear Complaint
On May 12, 2015 the ALJ issued an ID (Order #34) granting Canon's motion for summary determination of violation and recommending the issuance of a GEO and several cease and desist orders. No party petitioned for review of the ID and the final determination and issuance of remedial orders was completed on August 31, 2015 and sent for the 60-day Presidential Review two weeks ahead of the scheduled date set that had been set 13 months earlier.
The 2018 Investigation (377-TA-1106)
There are 49 named respondents in the new investigation 377-TA-1106 facing allegations of patent infringement on multiple claims associated with nine recently issued Canon patents. Although this is 50% greater than the number of respondents named in the 2014 investigation, with the substance of the investigation being similar and the structure of the ITC investigation being so well defined, it's likely there will be many similarities to the 2014 proceedings. Please click the following embedded link for a projected timeline of the 337-TA-1106 investigation.
Given that there are only a small number of manufacturers involved in the investigation and that, generally speaking, the manufacturers provide indemnifications to the importers, who in turn provide indemnifications to the distributors and resellers, then the bulk of the litigation cost is going to tree-up to the manufacturers.
Given also that the payer of the legal fees is likely to be the dictator of the respective defense strategies, it provides another reason to closely observe who responds to the ITC investigation and who does not. Defaulters will ultimately be considered guilty of any infringement findings entered by the commission and subject to remedial actions, such as general or limited exclusion orders as well as any cease and desist orders.
The Named Respondents 2018 ('1106) ITC Dongle Gear Complaint
The summary table of '1106 respondents will be maintained and accessible from this link as we continue to add currently missing details for each of the named respondents in terms of their known status as a manufacturer, an importer, distributor, reseller, or internet retailer.
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About the author:
Ian Elliott has over 35 years experience in the imaging supplies industry and, at prior places of employment, has faced direct involvement in OEM versus aftermarket patent litigation. Mr. Elliott is not a patent attorney, is not qualified to provide legal advice, and this article is not an attempt to provide any kind of legal advice. It represents no more than his views and opinions based on decades of relevant experience.