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ITC judge recommends banning toner imports that infringe Canon's IP

Can the US market manage without them? Commission wants to know

A bunch of toner manufacturers and sellers have infringed on Japanese electronics outfit Canon's patents, according to an initial finding from the US International Trade Commission (ITC), with a judge recommending imports of their products be banned.

The notice [PDF] from an administrative law judge this week said an Initial Determination (ID) was made on Tuesday 15 March, finding that "certain toner supply containers" violated Section 337.

The notice asks for input from the public on whether to institute an import ban if the commission agrees and finds the firms violated the rule.

Curiously, the applicable law isn't just interested in whether there has been actual infringement – it also allows room for the idea that Americans might "need" to use potentially law-breaking kit.

Section 337 of (Tariff Act of 1930) says that, if the ITC finds a vendor's made a patent violation, it can't ship its goods into the United States. That is, unless...

after considering the effect of such exclusion upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such articles should not be excluded from entry.

That's what the consultation is all about, which presumably wants to find out whether the American public can live without the kit from the 19 vendors – including several Chinese firms and their US subsidiaries – listed in the notice.

The investigation is one of two linked to a complaint [PDF] alleging violation of 13 of its patents by 26 firms, first made by Canon Inc on March 8 2021.

According to law blog Law360, Canon "withdrew accusations against three — Taiwan-based General Plastic Industrial Co. Ltd., Minnesota-based Katun Corp and Los Angeles-based Sun Data Supply Inc — after reaching settlement agreements."

Crucially the public consultation will also include a look at the effect on those who sell the gear after importation, and will attempt to make sure enough of the articles made by Canon and non-infringing rivals can be made to replace the allegedly infringing units "if they were to be excluded." It'll also consider whether this can be done "within a commercially reasonable time." These are among several important factors the ITC wants to look into to see how the recommended orders would impact consumers in the United States.

Listed respondents

  • Ninestar Corporation and Ninestar Image Tech Limited of Guangdong, China;
  • Ninestar Technology Company, Ltd. of Chino, California;
  • Static Control Components, Inc. of Sanford, North Carolina;
  • Copier Repair Specialists, Inc. of Lewisville, Texas;
  • Digital Marketing Corporation d/b/a Digital Buyer Marketing Company of Los Angeles, California;
  • Do It Wiser, Inc. d/b/a Image Toner of Wilmington, Delaware;
  • Easy Group, LLC of Irwindale, California;
  • Ink Technologies Printer Supplies, LLC of Dayton, Ohio;
  • Kuhlmann Enterprises, Inc. d/b/a Precision Roller of Phoenix, Arizona;
  • LD Products, Inc. of Long Beach, California;
  • NAR Cartridges of Burlingame, California;
  • The Supplies Guys, Inc. of Lancaster, Pennsylvania;
  • MITOCOLOR INC. of Rowland Heights, California;
  • Zinyaw LLC d/b/a and Supply District of Houston, Texas;
  • Sichuan XingDian Technology Co., Ltd. of Sichuan, China;
  • Sichuan Wiztoner Technology Co., Ltd. of Sichuan, China;
  • Anhuiyatengshangmaoyouxiangongsi of Ganyuqu, China;
  • ChengDuXiangChangNanShiYouSheBeiYouXianGongSi of SiChuanSheng, China;
  • and Hefeierlandianzishangwuyouxiangongsi of Chengdushi, China.

The judge recommended that 19 of the firms (listed in the sidebar) be subjected to shipping bans, if the ITC concurs with his findings and the public response does too. Written submissions from the public must be filed by April 14, 2022.

Earlier this year, the Japanese firm was forced to ship ink cartridges without copy-protection chips fitted, meaning that even a sanctioned Canon cartridge would display an error message when installed. The firm's German arm went on to post some helpful hints on how to get around it, which by extension would work for fitting third party cartridges too.

We have asked Canon for comment. ®

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