Fuji Electric, Ninestar Continue to Demand Exemption from ITC’s GEO

Fuji Electric and Ninestar continue to argue with the United States ITC (International Trade Commission) demanding exemption from general exclusion order (GEO) concerning Canon’s U.S. patents 5,903,803 (‘803) and 6,128,454 (‘454). These two patents cover the twisted prism projection coupling Canon uses on the OPC drum drive gears for many of its cartridges.

The time for a final decision is growing closer for the GEO to go into effect. These proceedings will terminate on June 28, 2013 and it appears likely that Canon will get its GEO without the exclusions sought by Fuji Electric and Ninestar.

Canon has replied to the submissions from Fuji Electric and Ninestar, arguing that the GEO should not be limited to exclude only products with projections like those found on specific types of accused products and that any exemptions from a GEO are groundless. In the mean time, the ITC’s Office of Unfair Import Investigations (OUII), assigned to represent the public interest in ITC investigations and make recommendations to the commission, filed its opinion on remedy, agreeing for the most part with Canon.

In its submission, Fuji Electric urged the ITC that if it should issue a GEO, it should write it carefully so that non-infringing products—such as Fuji Electric’s—would not be excluded from importation.

On May 8, Canon replied to Fuji Electric’s submission. It objected to the idea of limiting the GEO in this way, stating “The Commission consistently issues GEOs excluding all infringing products and has held repeatedly that exclusion orders should not be limited to specific products found by the Commission to infringe.”

Canon also indicates Fuji’s claims that a broad GEO will result in higher prices for consumers are “pure speculation.” Canon holds that Fuji’s concern must be balanced against Canon’s need for effective relief.

Ninestar wants its products to be specifically exempted from any GEO issued and asked the commission to recognize in its orders that “even if cartridges are technically ‘covered’ by the claims of Canon’s patents, they may be lawfully sold if they are remanufactured in accordance with U.S. law.”

In its reply, Canon does not believe Ninestar should be exempted. It cites a previous decision in which the ITC found that a respondent already under a consent order should not be exempted from a GEO. In that case, the GEO was ultimately written with language stating that any importers that believed themselves to be excluded from the GEO by terms of a consent order could submit evidence to that effect to customs. But Canon says that the Ninestar consent order contains no language exempting the aftermarket supplier from a GEO.

Canon also says that no special mention or “carve-out” for cartridges remanufactured in accordance with U.S. law should be included in the GEO. This is because the proposed GEO already includes some degree of protection for remanufacturing.

Canon says its concern is that creating a special carve-out for remanufactured cartridges would open the door to confusion and mischief. The company points out that clones are sometimes passed off as remanufactured and this practice will become more prevalent if importers think the designation “remanufactured” will ensure that their products are less closely inspected by customs.

In its submission on remedy, the OUII mostly agrees with Canon on the issue of remedy. The staff agrees that the proper remedy is a GEO and cease-and-desist orders against the defaulting domestic respondents.

The OUII suggests that including a certification provision in the GEO, which would allow importers to certify that a particular imported article is outside the scope of the exclusion order, would be a better option than limiting the GEO as Fuji Electric suggested.