On April 16, 2012, the ITC issued a notice that it modified a general exclusion order (GEO) and cease and desist order to cover components of ink cartridges and terminated consolidated advisory opinion and modification proceedings in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).
By way of background, on October 17, 2007, the ITC issued a general exclusion order in Investigation No. 337-TA-565 prohibiting the unlicensed entry of ink cartridges covered by one or more claims of U.S. Patent Nos. 5,615,957; 5,622,439; 5,158,377; 5,221,148; 5,488,401; 6,502,917; 6,550,902; 6,955,422; 7,008,053; and 7,011,397.
According to the April 16 notice, on December 13, 2010, two Respondents in the underlying Investigation No. 337-TA-565, Ninestar Technology Co., Ltd. of China, and Ninestar Technology Company, Ltd. of Walnut, California (collectively, “Ninestar”), filed a petition to modify the GEO and a cease and desist order to indicate that certain redesigned ink cartridges were not covered by the ITC’s orders. On February 3, 2011, the Complainants in the underlying investigation, Epson Portland, Inc. of Hillsboro, Oregon, Epson America, Inc. of Long Beach, California, and Seiko Epson Corporation of Japan (collectively “Epson”) filed a petition to modify the GEO to indicate that components of certain ink cartridges were covered by the orders. The requested advisory opinion from Ninestar and modification proceeding by Epson were instituted as consolidated proceedings on March 18, 2011. See our March 22, 2011 post for more information.
Further according to the notice, on February 8, 2012, Epson and Ninestar filed a joint motion requesting the Commission to terminate the advisory opinion proceeding requested by Ninestar based on a settlement agreement. On the same day, Epson filed an unopposed motion for summary determination to modify the GEO and cease and desist order to include components of ink cartridges, in addition to the ink cartridges themselves, which the ALJ recommended to the Commission on February 21, 2012. Based on undisputed facts and arguments of Epson and Ninestar, the Commission adopted the ALJ’s recommendation and modified the GEO and cease and desist orders as requested, and terminated the consolidated proceedings.