On December 23, 2014, Epson Portland Inc. of Hillsboro, Oregon, Epson America, Inc. of Long Beach, California, and Seiko Epson Corp. of Japan (collectively, " Seiko Epson") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain unauthorized, aftermarket ink cartridges and components thereof that infringe one or more claims of U.S. Patent Nos. 8,366,233 (the '233 patent), 8,454,116 (the '116 patent), 8,794,749 (the '749 patent), 8,801,163 (the '163 patent), and 8,882,513 (the '513 patent) (collectively, the "asserted patents"):   

  • Zhuhai Nano Digital Technology Co., Ltd. of China
  • Nano Business & Technology, Inc. of Lake Oswego, Oregon
  • Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. of China
  • Huebon Co., Ltd. of Hong Kong
  • Chancen Co., Ltd. of Hong Kong
  • Zhuhai Rich Imaging Technology Co., Ltd. of China
  • Shanghai Orink Infotech International Co., Ltd. of China
  • Orink Infotech International Co., Ltd. of Hong Kong
  • Zinyaw LLC of Houston, Texas
  • Yotat Group Co., Ltd. of Hong Kong
  • Yotat (Zhuhai) Technology Co., Ltd. of China
  • Ourway Image Co., Ltd. of China
  • Kingway Image Co., Ltd. of China
  • Zhuhai Chinamate Technology Co., Ltd. of China
  • InkPro2day, LLC of Los Angeles, California
  • Dongguan OcBestjet Printer Consumables Co., Ltd. of China
  • OcBestjet Printer Consumables (HK) Co., Ltd. of Hong Kong
  • Aomya Printer Consumables (Zhuhai) Co., Ltd. of China
  • Zhuhai Richeng Development Co., Ltd. d/b/a Richeng Technology of China

According to the complaint, the asserted patents generally relate to a printing material container and a board mounted on a printing material container.  In particular, the '233 patent relates to a plurality of terminals adapted and positioned to contact printer-side contact forming members so that electrical communication is enabled with the printer.  The '116 patent relates to placing the high-voltage contact portions at the outermost ends of the overall contact portion arrangement and including a short detection contact portion that is placed between one of the high-voltage contact portions and all other contact portions.  The '749 patent relates to arranging the contact portions in two rows, and placing the high-voltage contact portions at the outermost ends of the lower (deeper) row.  The '163 patent relates to placing the high-voltage contact portions at the outermost ends of a row and of the overall contact portion arrangement and including a short detection contact portion that is placed between one of the high-voltage contact portions and all other contact portions.  Lastly, the '513 patent relates to arranging the contact portions in two rows and placing the high-voltage contact portions at the outermost ends of one of the rows and including a short detection contact portion.

In the complaint, Seiko Epson states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically refers to various ink cartridge products associated with the Proposed Respondents as infringing products.

Regarding domestic industry, Seiko Epson states that it currently manufactures ink cartridges that practice all of the asserted patents in the U.S.  Seiko Epson further states that a subsidiary packages and performs quality control inspections in the U.S. on ink cartridges that practice the asserted patents.  Seiko Epson specifically refers to its facility in Hillsboro, Oregon and states that a significant portion of that facility is dedicated to manufacturing ink cartridges that exploit the asserted patents.

With respect to potential remedy, Seiko Epson requests that the Commission issue a permanent general exclusion order, a limited exclusion order, and permanent cease and desist orders directed at the Proposed Respondents.  Seiko Epson states that a general exclusion order is warranted given the numerous sources abroad of allegedly infringing ink cartridges and components thereof and the available channels of distribution.