Epson and Ninestar End Their Dispute

The decade-long battle between Epson and Ninestar has finally ended.

The US International Trade Commission (USITC) has approved a settlement previously reached by the companies on November 17, 2017.

Back in 2006, the USITC (Washington DC Building pictured) instituted a 337 investigation based on a complaint filed by Epson Portland, Epson America, Inc. and Seiko Epson Corporation of Japan (collectively Epson). 24 respondents were named including Ninestar Technology Company Ltd. (Ninestar). Several respondents were subsequently terminated from the investigation on the basis of settlement agreements, consent orders or were found to be in default. On October 19, 2007, the USITC issued a general exclusion order (GEO) and a limited exclusion order.

Then the USITC instituted an additional 337 investigation on January 27, 2015, based on another complaint filed by Epson over alleged violations of the Tariff Act. Again, some respondents were terminated from the investigation as a result of settlement agreements and/or consent motion stipulations. A number of the named respondents defaulted. On October 28, 2015, the presiding administrative law judge (ALJ) granted Epson’s motion on the defaulting respondents. Based on evidence of a pattern of violation and difficulty ascertaining the source of the infringing products, the Commission issued a GEO to two companies that had defaulted on May 26, 2016.

On April 26, 2017, Ninestar, Ninestar Image Tech. Ltd., and Apex Microtech Ltd. (collectively Ninestar Group) filed a request for an advisory opinion declaring their refurbished Epson ink cartridges were remanufactured from empty Epson ink cartridges collected from the United States and are therefore outside of the scope of the GEOs. Epson filed a timely response opposing the request. The Ninestar Group filed a motion in reply to Epson’s opposition.

Consequently, the USITC set up a consolidated advisory opinion proceeding into both 377 investigations with Epson, the Ninestar Group, and the Office of Unfair Import Investigations named as parties to the proceeding.

As a result, on November 17, 2017, Epson and The Ninestar Group filed a joint motion to terminate the consolidated advisory opinion proceeding based on a settlement agreement. The joint motion included a confidential version of the settlement agreement. A public version of the agreement was filed with the public version of the joint motion.

The Commissions notice was issued December 7, 2017.