[Federal Register Volume 88, Number 105 (Thursday, June 1, 2023)]
[Notices]
[Pages 35915-35917]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11658]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1259]


Certain Toner Supply Containers and Components Thereof (I); 
Notice of Commission Determination To Institute a Modification 
Proceeding; Schedule and Procedure for the Modification Proceeding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission (``Commission'') has determined to institute a modification 
proceeding in the above-captioned investigation. The Commission has 
also determined to delegate the modification proceeding to the Chief 
Administrative Law Judge (``ALJ'') to designate a presiding ALJ to make 
all necessary factual and legal findings as to infringement and to 
issue a recommended determination.

FOR FURTHER INFORMATION CONTACT: Lynde Herzbach, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 205-3228. Copies of non-
confidential documents filed in connection with this investigation may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
[email protected]. General information concerning the Commission may 
also be obtained by accessing its

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internet server at https://www.usitc.gov. Hearing-impaired persons are 
advised that information on this matter can be obtained by contacting 
the Commission's TDD terminal, telephone (202) 205-1810.

SUPPLEMENTARY INFORMATION: On April 13, 2021, the Commission instituted 
this investigation under section 337 of the Tariff Act of 1930, as 
amended, 19 U.S.C. 1337 (``section 337''), based on a complaint filed 
by Canon Inc. of Tokyo, Japan; Canon U.S.A., Inc. of Melville, New 
York; and Canon Virginia, Inc. of Newport News, Virginia (collectively, 
``Complainants''). See 86 FR 19284-86. The complaint, as supplemented, 
alleges a violation of section 337 based upon the importation into the 
United States, sale for importation, or sale after importation into the 
United States of certain toner supply containers and components thereof 
by reason of infringement of certain claims of U.S. Patent Nos. 
10,209,667 (``the '667 patent''); 10,289,060 (``the '060 patent''); 
10,289,061 (``the '061 patent''); 10,295,957 (``the '957 patent''); 
10,488,814 (``the '814 patent''); 10,496,032 (``the '032 patent''); 
10,496,033 (``the '033 patent''); 10,514,654 (``the '654 patent''); 
10,520,881 (``the '881 patent''); 10,520,882 (``the '882 patent''); 
8,565,649; 9,354,551; and 9,753,402. Id. The complaint further alleges 
that a domestic industry exists. Id.
    The Commission instituted two separate investigations based on the 
complaint and defined the scope of the present investigation as whether 
there is a violation of section 337 in the importation, sale for 
importation, or sale within the United States after importation of 
toner supply containers and components thereof by reason of 
infringement of certain claims the '667 patent, the '060 patent, the 
'061 patent, the '957 patent, the '814 patent, the '032 patent, the 
'033 patent, the '654 patent, the '881 patent, and the '882 patent 
(collectively, ``the Asserted Patents''). Id.
    The notice of investigation (``NOI'') names twenty-six respondents, 
including twenty-two later found in default: (1) Sichuan XingDian 
Technology Co., Ltd. (``Sichuan XingDian'') of Sichuan, China; (2) 
Sichuan Wiztoner Technology Co., Ltd. (``Sichuan Wiztoner'') of 
Sichuan, China; (3) Copier Repair Specialists, Inc. (``Copier Repair 
Specialists'') of Lewisville, Texas; (4) Digital Marketing Corporation 
d/b/a Digital Buyer Marketing Company (``Digital Buyer'') of Los 
Angeles, California; (5) Ink Technologies Printer Supplies, LLC (``Ink 
Tech'') of Dayton, Ohio; (6) Kuhlmann Enterprises, Inc. d/b/a Precision 
Roller (``Precision Roller'') of Phoenix, Arizona; (7) NAR Cartridges 
of Burlingame, California; (8) Zhuhai Henyun Image Co., Ltd. (``Zhuhai 
Henyun'') of Zhuhai, China; (9) Zinyaw LLC d/b/a TonerPirate.com and 
Supply District (``Zinyaw'') of Houston, Texas; (10) Do It Wiser, Inc. 
d/b/a Image Toner (``Do It Wiser'') of Wilmington, Delaware; (11) 
MITOCOLOR INC. (``MITOCOLOR'') of Rowland Heights, California; (12) 
Anhuiyatengshangmaoyouxiangongsi (``Yatengshang'') of Ganyuqu, China; 
(13) ChengDuXiangChangNanShiYouSheBeiYouXianGongSi (``ChengDuXiang'') 
of SiChuanSheng, China; (14) Hefeierlandianzishangwuyouxiangongsi 
(``Erlandianzishang'') of Chengdushi, China; (15) Xianshi yanliangqu 
canqiubaihuodianshanghang (``CJ-us'') of Shanxisheng, China; (16) 
Ninestar Corporation of Guangdong, China; (17) Ninestar Image Tech 
Limited (``Ninestar Image'') of Guangdong, China; (18) Ninestar 
Technology Company, Ltd. (``Ninestar Tech'') of Chino, California 
(where Ninestar Corporation, Ninestar Image, and Ninestar Tech are 
collectively, ``Ninestar Respondents''); (19) Static Control 
Components, Inc. (``Static Control'') of Sanford, North Carolina; (20) 
Easy Group, LLC (``Easy Group'') of Irwindale, California; (21) LD 
Products, Inc. (``LD Products'') of Long Beach, California; and (22) 
The Supplies Guys, Inc. (``Supplies Guys'') of Lancaster, Pennsylvania; 
(collectively, ``Defaulting Respondents''). Id. The NOI also names the 
following respondents who were previously terminated from the 
investigation: General Plastic Industrial Co. Ltd. (``General 
Plastic'') of Taichung, Taiwan; Katun Corporation (``Katun'') of 
Minneapolis, Minnesota; Sun Data Supply, Inc. (``Sun Data Supply'') of 
Los Angeles, California; and Shenzhenshi Keluodeng Kejiyouxiangognsi 
(``KenoGen'') of Guangdong, China. Id. The Office of Unfair Import 
Investigations (``OUII'') was also a party to the investigation. Id.
    The complaint and NOI were later amended to correct the name of 
originally-identified respondent Do It Wiser, LLC d/b/a Image Toner to 
Do It Wiser, Inc. d/b/a Image Toner. Order No. 5 (May 13, 2021), 
unreviewed by 86 FR 29292-93 (June 1, 2021).
    The Commission found the Ninestar Respondents, Static Control, Easy 
Group, LD Products, and Supplies Guys in default. Order No. 7 (June 22, 
2021), unreviewed by Notice (July 6, 2021). The Commission also found 
respondents Sichuan XingDian, Sichuan Wiztoner, Copier Repair 
Specialists, Digital Buyer, Ink Tech, Precision Roller, NAR Cartridges, 
Zhuhai Henyun, Zinyaw, Do It Wiser, MITOCOLOR, Yatengshang, 
ChengDuXiang, Erlandianzishang, and CJ-us in default. Order No. 18 
(Sept. 28, 2021), unreviewed by Notice (Oct. 27, 2021). The Commission 
terminated respondents General Plastic, Katun, and Sun Data Supply from 
the investigation pursuant to consent order stipulations. Order No. 10 
(July 1, 2021), unreviewed by Notice (July 19, 2021). The Commission 
further terminated respondent KenoGen from the investigation based on 
partial withdrawal of the complaint. Order No. 13, unreviewed by Notice 
(Aug. 25, 2021).
    The Commission also terminated investigation as to certain claims 
of the Asserted Patents. Order No. 11, unreviewed by Notice (Aug. 25, 
2021).
    On October 1, 2021, Canon filed a motion seeking summary 
determination that the Defaulting Respondents have violated section 337 
and requesting that the presiding ALJ recommend that the Commission 
issue a general exclusion order (``GEO'') and cease and desist orders 
(``CDOs'') against certain respondents and set a 100 percent bond for 
any importations of infringing goods during the period of Presidential 
review.
    On May 15, 2022, the presiding Chief ALJ issued an initial 
determination (``ID'') granting Canon's motion and finding violations 
of section 337 by the Defaulting Respondents with respect to certain 
asserted patent claims. The Chief ALJ recommended that the Commission: 
(i) issue a GEO; (ii) issue CDOs against respondents Ninestar Tech, 
Static Control, Copier Repair Specialists, Digital Buyer, Do It Wiser, 
Easy Group, Ink Tech, Precision Roller, LD Products, NAR Cartridges, 
Supplies Guys, MITOCOLOR, Zinyaw, Ninestar Corporation, Ninestar Image, 
Sichuan XingDian, Sichuan Wiztoner, Yatengshang, ChengDuXiang, and 
Erlandianzishang; and (iii) set a 100 percent bond for any importations 
of infringing products during the period of Presidential review.
    On August 1, 2022, the Commission determined to affirm the ID's 
determination of a violation of section 337 with respect to Defaulting 
Respondents. 87 FR 48039-41 (Aug. 5, 2022). Accordingly, the Commission 
issued: (1) a GEO prohibiting the unlicensed entry of certain toner 
supply containers and components thereof that infringe one or more of 
claim 1 of the '667 patent; claim 1 of the '060 patent; claim 1 of the 
'061 patent; claim 1 of the '957 patent; claims 1 and 12 of the '814 
patent; claims 50, 58, and 61 of the '032

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patent; claims 1 and 13 of the '033 patent; claims 46 and 50 of the 
'654 patent; claims 1, 10, and 13 of the '881 patent; or claims 1 and 8 
of the '882 patent; and (2) CDOs against respondents Ninestar Tech, 
Static Control, Copier Repair Specialists, Digital Buyer, Do It Wiser, 
Easy Group, Ink Tech, Precision Roller, LD Products, NAR Cartridges, 
Supplies Guys, MITOCOLOR, Zinyaw, Ninestar Corporation, Ninestar Image, 
Sichuan XingDian, Sichuan Wiztoner, Yatengshang, ChengDuXiang, and 
Erlandianzishang. Id.
    On April 25, 2023, respondents Katun and General Plastic filed a 
petition pursuant to Commission Rule 210.76 (19 CFR 210.76) to modify 
the GEO in order to clarify that the order does not cover certain Katun 
and General Plastic redesigned toner supply containers (``New Katun 
Containers''). Katun and General Plastic also assert that if 
Complainants ``seek to extend language of the claims of the Asserted 
Patents to cover the New Katun Containers, such an expansion of scope 
is impermissible and renders the Asserted Patents invalid.'' Pet. at 2-
3, 29-30.
    On May 5, 2023, Complainants filed an opposition to Katun's and 
General Plastic's petition for a modification of the GEO. Complainants 
argue that Katun and General Plastic have not shown why the redesign 
could not have been adjudicated in the original investigation, and thus 
there is no basis to conclude the redesign constitutes a changed 
condition of fact. Complainants further argue that Katun and General 
Plastic do not make a plausible showing that the New Katun Containers 
do not infringe the Asserted Patents, and accordingly, no modification 
is required. Complainants argue that if a modification proceeding is 
instituted, then it should be referred to an ALJ for findings of fact 
and an initial determination. OUII did not file a response to the 
petition.
    The Commission has determined that the petition complies with the 
requirements for institution of a modification proceeding under 
Commission Rule 210.76(a)(1) (19 CFR 210.76(a)(1)) to determine whether 
Katun and General Plastic's redesigned New Katun Containers infringe 
one or more of claim 1 of the '667 patent; claim 1 of the '060 patent; 
claim 1 of the '061 patent; claim 1 of the '957 patent; claims 1 and 12 
of the '814 patent; claims 50, 58, and 61 of the '032 patent; claims 1 
and 13 of the '033 patent; claims 46 and 50 of the '654 patent; claims 
1, 10, and 13 of the '881 patent; or claims 1 and 8 of the '882 patent. 
The modification proceeding shall not include any validity issues 
because an invalidity challenge is not a proper basis to modify an 
exclusion order. Mayborn Group, Ltd. v. Int'l Trade Comm'n, 965 F.3d 
1350 (Fed. Cir. 2020). Further, the consent orders issued against Katun 
and General Plastic prohibit them from challenging validity of the 
relevant patents. 19 CFR 210.21(c)(4)(vi); Consent Order to Katun and 
General Plastic at ] 9 (July 19, 2021). Accordingly, the Commission has 
determined to institute a modification proceeding and refer the 
petition to the Chief ALJ as detailed in the accompanying Order.
    The assigned ALJ will make findings, may request briefing, and will 
issue a recommended determination (``RD'') to the Commission within six 
months of publication of this notice in the Federal Register. Should 
the ALJ determine that more time is necessary, the deadline may be 
extended for good cause shown. The Commission will issue a modification 
opinion within 90 days of receipt of the ALJ's RD unless the Commission 
otherwise orders. The following entities are named as parties to the 
proceeding: (1) Canon Inc; (2) Canon U.S.A., Inc.; (3) Canon Virginia, 
Inc; (4) Katun; (5) General Plastic; and (6) OUII.
    The Commission vote for this determination took place on May 25, 
2023.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: May 26, 2023.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2023-11658 Filed 5-31-23; 8:45 am]
BILLING CODE 7020-02-P