ALJ Denies Respondents’ Permissible Repair Motion For Summary Determination

ALJ David P. Shaw issued Order No. 23 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-918), claiming ALJ Shaw denied Respondents International Laser Group, Inc., Ninestar Image Tech Limited, Zhuhai Seine Technology Co., Ltd., Ninestar Technology Co., Ltd., Seine Tech (USA) Co., Ltd., Seine Image Int’l Co., Ltd., Ninestar Image Tech, Ltd., Seine Image (USA) Co., Ltd., and Nano Pacific Corp.’s (collectively, “Respondents”) motion for summary determination of permissible repair.

According to ITC Blog, Respondents insisted “they do not infringe the asserted claims of the asserted patents because they generally repair empty toner cartridges by reusing most components, and replacing worn components such as photosensitive drums, thereby engaging in permissible repair.” Later, Canon fought against the motion, claiming “there are genuine issues of material fact that preclude summary determination.”  In particular, Canon argued that the issues of “whether the OEM cartridges and drum units that Respondents allegedly ‘repair’ were the subject of exhausting sales in the United States” and “whether Canon’s separately patented drum units, viewed as a whole, are spent at the time Respondents replace the original OEM photosensitive drum with a new drum” were outstanding genuine issues of material fact.

With the opposition, the ALJ found “there are genuine issues of material fact as to whether or not the patented articles identified in the motion underwent an exhausting first sale, and that a finding of summary determination was not appropriate under the circumstances.”

In May 2014, Canon filed a complaint before the U.S. International Trade Commission (USITC) against 33 manufacturers, distributors and sellers of toner cartridges for infringement of nine patents (Nos. 8,135,304; 8,280,278; 8,369,744; 8,565,640; 8,630,564; 8,676,085; 8,676,090; 8,682,215; and 8,688,008). In February 2015, No. 337-TA-918 investigation requested by Canon was granted in part by ALJ David P. Shaw.

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