On August 4, 2011, ALJ Rogers issued the public version of his Initial Determination (“ID”) (dated June 10, 2011) in Certain Inkjet Cartridges with Printheads and Components Thereof (Inv. No. 337-TA-723).
By way of background, Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) accused Respondents MicroJet Technology Co., Ltd. (“MicroJet”); Asia Pacific Microsystems, Inc. (“APM”); Mipo Technology Limited; Mipo Science & Technology Co., Ltd.; Mextec d/b/a Mipo America Ltd.; SinoTime Technologies, Inc.; and PTC Holdings Limited (“PTC”) of infringing certain claims of U.S Patent Nos. 6,234,598; 6,309,053; 6,398,347; 6,412,917; 6,481,817; 6,402,279; and 6,412,917.
All of the Respondents, with the exception of MicroJet, APM and PTC have either previously settled or been found in default. HP also withdrew allegations of infringement of the ‘917 patent.
The patents-at-issue generally relate to inkjet cartridges and integrated circuits (ICs) used to control inkjets for printing. APM provides ICs to MicroJet and PTC for use in those companies’ inkjet cartridges.
Subject Matter Jurisdiction
As an initial matter, APM contested subject matter jurisdiction. APM argued, since that their sales of ICs to APM and MicroJet took place overseas, APM never imported any goods into the United States. ALJ Rogers rejected this challenge, noting that HP did not accuse APM of importation of infringing products. Rather, HP accused them of sale for importation and, under this standard, HP showed that APM sold infringing articles and knew or should have known that those articles would be imported into the US.
The ‘598 patent was the only patent for which the parties identified limitations that ALJ Rogers needed to construe. Claim 1 of the ‘598 patent reads, in part, “A printhead for an inkjet printer, comprising…” HP argued that “printhead” was not a limitation, but merely a statement of intended use. APM and the Commission Investigative Staff (“OUII”) argued that the specification of the patent makes it clear “printhead” is a limitation. ALJ Rogers agreed and adopted OUII’s proposed construction that “printhead” means “the element of a printer that applies the mark or image to the print media.”
ALJ Rogers, in Order 31, had earlier held that the ‘053, ‘347, ‘017, ‘817 and ‘279 patents were valid. See our January 13, 2011 post for more details. Accordingly, the ID dealt only with APM’s validity challenge in connection with the ‘598 patent – alleging obviousness and lack of enablement and written description. The challenge, however, was contingent upon the ALJ agreeing with HP and finding that “printhead” is not a limitation. The construction of the term mooted APM’s challenge, but ALJ Rogers also noted that APM’s challenges to validity failed on the merits as APM put forth arguments based on conjecture and selective reading of testimony.
Before making any determinations on infringement, ALJ Rogers ruled on a dispute between HP and the Respondents. HP analyzed only a representative class of inkjet cartridges. Based on these analyses, HP then accused certain named inkjet cartridges as well as all “clones” of these cartridges. ALJ Rogers found allegations against the “clones” to be too broad and vague and, therefore, limited infringement assertions to tested cartridges and those cartridges specifically listed by HP.
The ‘598 Patent
HP alleged MicroJet, PTC, and APM infringed certain claims of the ‘598 patent directly and indirectly. ALJ Rogers found that HP offered undisputed expert testimony that MicroJet and PTC directly infringed. He found, however, that APM did not directly infringe because the claim requires a “printhead” and APM only produces wafers with integrated circuits.
With respect to induced infringement, ALJ Rogers further determined that MicroJet knew about all of the asserted HP patents and reviewed them closely. They then sold the print cartridges to downstream manufacturers to be used in an infringing manner. ALJ Rogers also held that HP failed to prove APM had knowledge of the patents and, therefore, found that APM did not induce infringement.
Regarding contributory infringement, HP accused only APM, citing to expert testimony including testimony that the circuitry of the wafers APM sold are too complex to have any other use than in an inkjet. APM argued that there are non-infringing uses for printheads, such as using non-ink liquids. ALJ Rogers rejected APM’s argument, pointing out that the issue is whether the wafer itself, not the printhead, had non-infringing uses. He found that it did not have any substantial non-infringing uses.
The ‘053, ‘347, ‘817 and ‘297 Patents
According to the ID, HP provided unrebutted evidence regarding infringement of the remaining patents. Accordingly, ALJ Rogers determined that MicroJet and PTC directly infringed, but APM did not; MicroJet induced infringement but APM did not; and APM contributed to infringement.
Summary determination establishing that HP satisfied the economic prong had been granted in Order No. 30 (see our March 9, 2011 post for more details) so the only remaining issue was the technical prong. HP and the Staff agreed that HP put forth sufficient evidence establishing that HP’s products practiced the claims of the patents. Respondents did not address the technical prong.
Remedy & Bonding
HP sought a general exclusion order pursuant to 19 U.S.C. §§ 1337(d)(1) (circumvention) and (d)(2) (pattern of violation). HP argued that MicroJet (the importing entity) does not put its logo on products, making it easy for them to circumvent a limited exclusion order either directly or by using downstream sellers. HP also argued that Respondents’ pattern of violation warranted a general exclusion order. ALJ Rogers recommended a general exclusion order based on circumvention but found HP did not prove a pattern of violation.
ALJ Rogers also recommended a bond of 100% of the entered value. Though it is HP’s burden to prove need for the bond, MicroJet and PTC both failed to participate. Therefore, there is no reliable information by which the Commission can set a bond by eliminating the differential between the domestic and imported/infringing product.