The Markman Order and an Emerging Expectation for Non-Infringement

On Thursday, February 28, 2019, the latest development in the ongoing legal battle between Canon and certain aftermarket manufacturers and distributors of alternative toner cartridges involved in the '1106 ITC investigation occurred. ALJ Dee Lord issued a Markman order and order addressing motions for Summary Determination and pre-Hearing Briefs.

For more background related to this subject, readers can review an earlier publication from December 2018, in which we posed the hypothetical question of whether the Respondents in the investigation were closing in for the kill and whether Canon may have been staring down the barrel toward a rare loss.

The sides had previously prepared and argued their positions for claim construction at the Markman hearing that took place on August 31, 2018. The Respondents were still participating in the complaint, then filed a flurry of motions for Summary Determination for non-infringement toward the end of November 2018.

The Respondents' sought the claim construction necessary to determine that Canon's patents were not infringed and, presumably, to protect their base if they failed with their arguments; Ninestar also filed a motion for summary determination based on the invalidity of the patents asserted in the complaint.

The five disputed claim terms are shown in the charts below, complete with Canon's, the Respondents', and the Staff attorneys' previously proposed claim constructions. More significantly, however, they now include the all-important Administrative Law Judge Lords' ruling to construct the claim terms that will govern the remainder of the case.

Disputed Claim One Claim Construal

Disputed Claim Two and Three Claim Construal

Disputed Claim Four Claim Construal

Disputed Claim Five Claim Construal

We believe the critical claim term determination to focus on from the Markman Order is the first one, which clearly states the coupling member is movable between a first angular position and a second angular position. We believe this to be the critical determination the Respondents have sought since the beginning of the case to support their argument for non-infringement.

It would therefore appear, under the construction of the claim terms that have been adopted, there cannot be any infringement and that Canon must eventually lose its argument against the non-defaulting Respondents.

We are not qualified to state this as a definitive outcome, only that this appears to be the outcome of the order. What we do know, however, is that the parties must quickly  "meet and confer concerning the effect of the adopted constructions on the pending motions for summary determination and the hearing in this investigation."

Then, no later than this Friday, March 8, 2019, the parties must file a joint submission to firstly identify each motion for summary determination that has been rendered moot by the adopted claim construction and, secondly, for each action that a party contends is still viable, to indicate whether the step is "ripe for adjudication" or whether any party argues that supplemental briefing is necessary to address the adopted claim constructions.

This March 8, 2019 filing should provide more clarity regarding the position of the two sides that follows this Markman claim construction order and whether our conclusion for the non-infringement of the patents asserted in the complaint is accurate.

We will continue to closely monitor the upcoming filings to see which twist the investigation will take.



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.

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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