ITC Issues Exclusion & CD Orders Requested by HP on Certain Ink Supplies

January 18, 2011 by Karen Marzullo|AD/CV - Patent

The International Trade Commission has issued a general exclusion order and a cease and desist (CD) order in its section 337 patent-based investigation of certain inkjet ink supplies and components thereof (Inv. No. 337-TA-691). The ITC has also terminated the investigation.

Patent Complaint Filed by Hewlett-Packard

This investigation was instituted based on a complaint filed by Hewlett-Packard Company of Palo Alto, California, which alleged violations of section 337 of the Tariff Act of 1930 based upon the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain inkjet ink supplies and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 6,089,687 (the 687 patent) and 6,264,301 (the 301 patent), among others.

The complaint was filed against the following respondents, among others¹:

Mipo International Ltd. of Hong Kong;
Mextec Group Inc. dba Mipo America Ltd. of Miami, FL;
Shanghai Angel Printer Supplies Co. Ltd. of China;
Shenzhen Print Media Co., Ltd., of China;
Zhuhai National Resources & Jingjie Imaging Products Co., Ltd., of China;
Tatrix International of China; and
Ourway Image Co., Ltd., of China.

General Exclusion Order Excludes Infringing Articles Except Under License

According to the general exclusion order, inkjet ink supplies and components thereof covered by one or more of claims 6 and 9 of the 687 patent and claims 1, 5, and 6 of the 301 patent are excluded from entry into the U.S. for consumption, entry for consumption from a foreign-trade zone, or withdrawal from warehouse for consumption, for the remaining terms of the patents, except under license of the patent owner or as provided by law.

60-Day Bond is 100% of Entered Value

The general exclusion order states that the excluded inkjet ink supplies and components thereof are entitled to entry into the U.S. for consumption, entry for consumption from a foreign trade zone, or withdrawal from a warehouse for consumption, under bond in the amount of 100% of the entered value of the products, from the day after the order is received by the U.S. Trade Representative until such time as the USTR notifies the ITC that the order is approved or disapproved but, in any event, not later than 60 days after the date of receipt of the order.

The order notes that this provision does not exempt infringing articles from seizures under the trademark laws enforced by U.S. Customs and Border Protection.

CBP May Require Certification that Imports are Not Subject to Order

At the discretion of CBP and pursuant to procedures it establishes, persons seeking to import inkjet ink supplies and components thereof that are potentially subject to the general exclusion order may be required to certify that they are familiar with the terms of the order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under the order. At its discretion, CBP may require persons who have provided such certification to furnish such records or analyses as are necessary to substantiate the certification.

Cease and Desist Order Issued Against Mextec

The ITC has also issued a cease and desist order against Mextec, which prohibits the importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, the excluded inkjet ink supplies and components thereof.

The conduct prohibited under the cease and desist order may be continued during the 60 day period in which the order is under review by the USTR, subject to the posting of a bond in the amount of 100% of the entered value of the covered products.

¹The complaint also included four additional respondents. Three respondents, InkPlusToner.com; SmartOne Services LLC dba InkForSale.net; and Comptree Ink dba Meritline, ABCInk, EZ Label, and CDR DVDR Media of City, reached settlement agreements with HP and were terminated from the investigation. One respondent, Zhuhai Gree Magneto-Electric Co., Ltd., was terminated from the investigation on the basis of a consent order.

(See ITT's Online Archives or 10/29/09 news, 09102945, for BP summary of ITC's initiation of this investigation.)

ITC contact - James Worth (202) 205-3065

(FR Pub 01/18/11, Inv. No. 337-TA-691)

The general exclusion order (as posted on EDIS) is available by emailing documents@brokerpower.com.