Are the Respondents in the ITC Investigation closing in for the kill?

The third dongle-gear patent dispute, initiated by Canon back on February 28, 2018, in the form of the International Trade Commission, named 49 respondents and asserted infringement of 9 patents (containing 193 claims, of which 28 were independent). The dispute has now effectively been whittled down to 3 respondents (Aster Graphics, Print-Rite, and Ninestar), 1, 7 patents (Canon has withdrawn 2), and 21 claims, of which ten are independent and 11 dependent.2

It is not unusual for the focus to narrow in on specific patents and claims as a complaint progresses through the legal system. Indeed, ITC ALJ typically pressures complainants to reduce the number of shares in a suit to lessen the burden on the court (and the parties) of adjudicating the action.

The comparisons provided in the charts below are not intended to imply that the complainant's position, or that of the respondents, is either weaker or stronger due to the narrowing focus. This is just typical of the way intellectual property disputes usually progress.

Summary Charts - The Narrowing Focus of the DisputeCharts to show change in complaint Feb 2018 to Dec 2018

As we noted in a previously published article, a milestone occurred on August 31, 2018, when the Markman hearing occurred. This event can be described as a mini-trial during which each side could argue its case for claim construction - i.e., how each claim in the dispute should be legally interpreted.

What does the complaint boil down to?

Five claim terms remain disputed, and, predictably, Canon has its interpretation of them, and the respondents have theirs; they are different, which is why the dispute continues.

What was especially interesting, however, was that the ITC staff attorney's 3 had (by this time) also developed their claim interpretations, and, in their August 2018 Markman brief, it was clear these were substantially aligned with those of the respondents and not with Canon.

ITC 1106 Disputed Claim Terms_1ITC 1106 Disputed Claim Terms_2

ITC 1106 Disputed Claim Terms_3

ITC 1106 Disputed Claim Terms_4

ITC 1106 Disputed Claim Terms_5

While both sides have now argued their case for claim construction, we still don't know which arguments presented at the Markman hearing had the most significant influence over ALJ Lord and which interpretations she may be leaning toward. As of this date (December 11, 2018), no Markman hearing claim construction order has been issued, and, indeed, there may never be one. 4

A Markman claim construction order (should one be issued) would determine if the three principle respondents in the investigation (Aster Graphics, Print-Rite, and Ninestar) are to be cleared of patent infringement prior to the trial.

Relevance of the five disputed claim terms to each of the primary respondents:

The following table shows how the five disputed claim terms relate to each of the three primary respondents in the investigation and which claims the disputed terms are mentioned within each of the remaining asserted patents.

The key takeaway should be that, for each respondent to be cleared of the patent infringement claims before trial, they each need any Markman ruling on claim interpretation to be in their (and the Staff attorney's) favor on all five disputed terms.

Although there are slight differences regarding which claims apply to which respondent and which patents still apply to the respondents, all five claim terms remain relevant to each respondent in some form or other.

ITC 1106 Summary Table Disputed Claim Terms Vs. Respondents

Another procedural milestone:

A further milestone was reached on November 28, 2018, with the passing of the deadline for filing motions for summary determination. What's of interest here is that, a few days in advance of this deadline, (perhaps unsurprisingly) the three primary respondents (Ninestar, Aster Graphics, and Print-Rite) all filed motions for summary determination of non-infringement, with Ninestar also filing a second motion for a summary determination of invalidity.

What are motions for summary determination designed to achieve?

With the respondents filing motions for summary determination, they seek to establish no infringement to answer for, and they should be removed from the investigation before the trial.

The problem the respondents face with the summary determination motions is that there's no obligation for ALJ Lord to issue a ruling on them, although, should she decide to do so, they would be decided based on the Markman hearing for claim construction.

Should a claim construction ruling occurs, and ALJ Lord adopts the respondent's (or Staff attorney's) claim language interpretations, there would no longer be a case for infringement of the remaining patents (per the joint stipulation regarding the violation or non-infringement 5). Therefore, each of the three primary manufacturers (on who the importers, distributors, and resellers depend) would be dismissed from the investigation, and their products effectively immunized.

However, in these circumstances, a Limited Exclusion Order could still issue against each of the non-participating respondents, particularly those that have previously defaulted.

ITC 1106 Summary Table Claims Vs Accused Products

The argument for non-infringement:

It is essential to understand what Canon has already agreed to in the joint stipulation:

If a Markman decision were to make clear that at least one disputed term of every claim asserted by Canon against the Accused Products of Aster (Type A or B), Print-Rite (Type C, D, or E), and Ninestar (Type F, G, or H), requires the claimed coupling member to be capable of pivoting or inclining concerning the photosensitive drum, then the Accused Products would not infringe any of the claims asserted against them under that claim construction.


Any claim construction ruling (should one be issued) that clearly (and thoroughly) aligned itself with the position of the Respondents and the Staff attorneys on all five disputed claim terms means there would be no infringement case for the respondents to answer to.

Any claim construction ruling aligned with Canon's position on at least one of the five disputed claim terms means infringement would have been determined, and, to avoid an outright loss, the respondents would then have to rely on arguments for invalidity of the asserted patents.

What is intriguing in this matter is that only one legal question remains in the argument for infringement that bears on every one of the five disputed claim terms; that is, whether the "claimed coupling member [is] capable of pivoting or inclining."

This is intriguing because it raises the possibility that a single determination by ALJ Lord, ruling the coupling member must be capable of pivoting or inclining concerning the photosensitive drum to infringe the asserted patents, would seem to be likely to decide the fundamental question of patent infringement in favor of the three participating respondents.

Of course, the opposite is true in that a single decision by ALJ Lord that the coupling member does not have to be capable of pivoting or inclining concerning the photosensitive drum would decide the patent infringement case in Canon's favor.

Invalidity Versus Infringement

In such an adverse ruling for the respondents, they would then be forced to switch tactics to argue the invalidity of the asserted patents (per Ninestar's summary determination motion for invalidity) on the basis that the written descriptions, on which the patents rely, contain no mention that the coupling member does not have to be capable of pivoting or inclining.

If an invalidity argument comes into play, should Ninestar ultimately prevail in its motion for summary determination of the invalidity of the patents? The entire litigation would be dismissed, and no exclusion order would issue against any of the named initially 49 respondents, regardless of any defaults.

Could a Markman ruling end the dispute? 

Unfortunately, regardless of the outcome of any potential Markman claim construction ruling, and despite the joint stipulation the parties have agreed to, they have not forfeited their right to appeal or to argue their case in the district courts further. In other words, an adverse Markman ruling against the complainant or respondents and their options to appeal have been left open. Therefore, it is quite possible that, even in the event of a claim construction ruling being issued, the dispute would still not be fully resolved and would continue through the legal process.

How likely is it the Respondents are closing in for the kill?

The fact that;

1. The Staff attorney's claim interpretation language is almost identical to the respondents. It must be a significant confidence booster for the respondents because it is usually persuasive, although not binding on the ALJ. 

2. There is a joint stipulation entered by the complainant (Canon) and the respondents that any claim construction ruling clearly stating the coupling member must be capable of pivoting or inclining concerning the photosensitive drum would result in non-infringement.

3. a single decision by the ALJ on the claim construction would conclusively settle the argument on all five disputed claim terms.

4. Even if a claim construction order on the disputed terms were adverse to the respondents, thereby determining the patent infringement argument in favor of Canon, then it would immediately bring into play the argument for invalidity on which Ninestar has taken the lead with its motion for summary determination for invalidity.

Given these points, a betting person would probably think the respondents look more likely to prevail than the complainant. However, because there is no requirement for the ALJ to issue a claim construction order or for any decision to be made on the four motions for summary determination, the likelihood is that the matter will not conclude early and will still proceed to trial at the end of January 2019. Should this be the case, we will have to wait for the Initial Determination due on March 29, 2019, to learn which side's arguments have persuaded the ALJ.


To access our consolidated paper explaining the International Trade Commission's investigation into the third complaint in six years filed by Canon against aftermarket manufacturers, importers, distributors, and resellers of new-build cartridges, please click the image below.

Book 6 - Generic Cartridges_ The Legal Landscape


It is not the case that 46 of the 49 Respondents have been dismissed from the investigation. However, due to previously established patent indemnification agreements, the three primary respondents have effectively assumed the case for many of the named respondents. As the "mega suppliers," these three Respondents are incentivized to prosecute if they believe they have a reasonable chance of prevailing. On the other hand, no single importer or reseller has much motivation to continue litigating since the success of its supplier will decide its fate.

We have delineated between independent and dependent claims because, as a matter of law, a dependent claim cannot be infringed if the independent claim it is attached to is not infringed. Defendants focus on proving non-infringement of the independent claims knowing that they must also resolve infringement on the dependent claims.

The Staff attorney at the ITC is a neutral third party whose position is often persuasive to but never binding on, the ALJ and the Commission.

There is no obligation for ALJ Lord to issue a Markman hearing order or to decide the four Motions for Summary Determination before trial. In part, because of the accelerated pace of a 337 investigation, ITC ALJs often go to trial without deciding dispositive motions (such as these) before trial. Once the problem is over, the ALJ has about two months to consider the evidence presented before and during the trial before issuing an Initial Determination.

The Joint Stipulation was entered into on September 27, 2018, whereby the Parties agreed on the five claim terms in dispute and that if a controlling claim construction ruling made clear that at least one disputed time of every claim asserted against the Products requires the claimed coupling member to be capable of pivoting or inclining concerning the photosensitive drum, then the Products would not infringe any of the claims asserted against them under that construction and vice versa.

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