USITC Publication 5303•Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Inv. 337-TA-1174
Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Inv. 337-TA-1174
USITC Publication 5303Itc
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In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 Publication 5303 March 2022 U.S. International Trade Commission Washington, DC 20436
U.S. International Trade Commission Washington, DC 20436 www.usitc.gov In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 Publication 5303 March2022
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 ISSUANCE OF A GENERAL EXCLUSION ORDER AND CEASE AND DESIST ORDERS; TERMINATION OF INVESTIGATION AGENCY: U.S. International Trade Commission. ACTION: Notice. SUMMARY: Notice is hereby given that the U.S. International Trade Commission has affirmed a summary determination of violation of section 337 and has determined to issue (1) a general exclusion order (“GEO”) denying entry of certain toner cartridges, components thereof, and systems containing same; and (2) cease and desist orders (“CDOs”) against 20 respondents (listed below). The investigation is terminated. FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, telephone (202) 205-3179. 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 EDIS3Help@usitc.gov. General information concerning the Commission may also be obtained by accessing its 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 September 23, 2019, the Commission instituted this investigation based on a complaint filed by Brother Industries, Ltd. of Nagoya Japan; Brother International Corp. (U.S.A.) of Bridgewater, New Jersey; and Brother Industries (U.S.A.), Inc. of Bartlett, Tennessee (collectively, “Brother”). 84 FR 49762-63 (Sept. 23, 2019). The complaint alleged violations of section 337 based on the importation into the United States, the sale for importation, or the sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same by reason of infringement of certain claims of U.S. Patent Nos. 9,568,856 (“the ’856 patent”); 9,575,460 (“the ’460 patent”); 9,632,456 (“the ’456 patent”); 9,785,093 (“the ’093 patent”); and 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”). Id. The Commission’s notice of investigation named the following 32 respondents: AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty Limited of Kowloon, Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside, California (“Aster”); Aztech Enterprises Limited of Kowloon, Hong Kong (“Aztech”);
2 Billiontree Technology USA Inc. of City of Industry, California (“Billiontree”); Carlos Imaging Supplies, Inc. of Hacienda Heights, California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”); Eco Imaging Inc. of Irvine, California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights, California (“Ecoolsmart”); EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Greencycle Tech, Inc. of South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd. of Kowloon, Hong Kong (“Hongkong Boze”); I8 International, Inc. of City of Industry, California (“I8”); IFree E-Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E- Commerce of Walnut, California (“Ikong”); Intercon International Corp. of Brea, California (“Intercon”); IPrint Enterprise Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of Long Beach, California (“LD Products”); Linkyo Corp. of La Puente, California (“Linkyo”); Mangoket LLC of Alhambra, California (“Mangoket”); New Era Image LLC of Corona, California (“New Era”); OW Supplies Corp. of Corona, California (“OW Supplies”); Solong E- Commerce Co., LLC of Wan Chai, Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of Wan Chai, Hong Kong (“Smartjet”); Super Warehouse Inc. of Blaine, Washington (“Super Warehouse”); Theresa Meng of Brooklyn, New York (“Ms. Meng”); Triple Best LLC of San Diego, California (“Triple Best”); V4ink, Inc. of Diamond Bar, California (“V4ink”); and Zhuhai Xiaohui E-Commerce Co., Ltd. of Zhuhai, China (“Xiaohui”). Id. at 49762-63. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 49763. Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however, did not oppose the summary determination motion of violation as to the accused products, even though Aster’s products are subject to the motion. See Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation (Mar. 4, 2020). EPS and IFree were terminated from the investigation based upon withdrawal of the complaint against them. See Order No. 32 (Jan. 28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020). Cartridge Evolution, E-Z Ink, Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and V4ink were terminated from the investigation based upon entry of consent orders. See Order No. 36 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No 38 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 37 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 10 (Oct. 18, 2019), unreviewed by Comm’n Notice (Nov. 6, 2019); Order No. 17 (Nov. 21, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 28 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020); Order No. 18 (Nov. 27, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 33 (Fe. 3, 2020), unreviewed by Comm’n Notice (Mar. 4, 2020). The following 21 respondents defaulted: AMI, Globest, An An Beauty, Aztech, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse, and LD Products (collectively, “Defaulting Respondents”). See Order No. 35 (Mar. 5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019).
3 On March 12, 2020, Brother filed a motion for summary determination of violation of section 337 by Aster and the Defaulting Respondents and for a recommendation that the Commission issue a GEO and CDOs. See Complainants’ Motion for Summary Determination of Violation and for Recommended Determination on Remedy and Bonding. On March 23, 2020, OUII filled a response in support of Brother’s motion. See Commission Investigative Staff’s Response to Brother’s Motion for Summary Determination of Violation. No respondent filed a response to Brother’s motion. Id. On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (“ID”) (Order No. 40) granting Brother’s motion for summary determination on violation of section 337 and issued a recommended determination (“RD”) on remedy and bonding. The ID found that the Commission has subject matter jurisdiction over the investigation. ID at 34. The ID further found that none of the respondents contest the Commission’s personal jurisdiction over them or in rem jurisdiction as to the accused products. ID at 34-35. The ID found that Brother: (1) established the importation requirement as to Aster and Defaulting Respondents, ID at 36-79; (2) demonstrated that the accused products infringe the asserted claims, id. at 118-133; and (3) demonstrated that the domestic industry (“DI”) products practice at least one claim of each Asserted Patent and that a DI exists in the United States, id. at 84-118. The RD recommended issuance of a general exclusion order (“GEO”) (or, in the alternative, a limited exclusion order directed to Aster and each of the Defaulting Respondents). RD at 134-44. The RD further recommended issuance of cease and desist orders (“CDOs”) directed to Aster and each defaulting respondent that has domestic operations. Id. at 144-46. The RD also recommended setting different bond rates for entry of the different products covered by the GEO during the period of Presidential review. Id. at 146-48 (recommended bond rate table at 147). No one petitioned for review of the ID. On August 24, 2020, Aster filed a public interest statement in response to the Commission’s notice soliciting public interest comments pursuant to 19 CFR 210.50(a)(4)(i). In its submission, Aster argued that any Commission remedial orders issued in this investigation should not cover its new products pursuant to its stipulation with Brother. See Respondent Aster Graphics, Inc.’s Statement of Public Interest. On August 26, 2020, Brother filed a response. See Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond. On September 8, 2020, the Commission determined not to review the ID and requested written submissions on remedy, the public interest, and bonding. 85 FR 56628-31 (Sept. 14, 2020). The Commission rejected Aster’s August 24, 2020 public interest submission as improper under 19 CFR 210.50(a)(4)(i). Id. at 56630. The Commission noted that while 19 CFR 210.50(a)(4)(i) provides that parties may file information with the Commission relating to the public interest, Aster’s submission concerned the scope of the remedy and thus did not fall within the ambit of the public interest submissions provided for under 19 CFR 210.50(a)(4)(i). Id. The Commission stated that “Aster will have an opportunity to raise its arguments regarding the scope of any remedial orders in a remedy submission before the Commission in response to the instant notice, which invites parties to file submissions addressing remedy, bonding and the public interest as noted below.” Id.
4 On September 22, 2020, Brother, Aster, and OUII filed initial submissions in response to the Commission’s request. See Complainants’ Submission on Remedy, the Public Interest, and Bonding; Respondent Aster Graphics, Inc.’s Submission on Remedy, the Public Interest and Bonding; Response of the Office of Unfair Import Investigations to the Commission’s Request for Written Submissions Regarding Remedy, the Public Interest, and Bonding. On September 29, 2020, the parties filed reply submissions. See Complainants’ Reply Submission on Remedy, the Public Interest, and Bonding;1 Respondent Aster Graphics, Inc.’s Reply to the Submission of the Office of Unfair Import Investigations and Complainants on Remedy, the Public Interest and Bonding; Reply of the Office of Unfair Import Investigations to the Private Parties’ Written Submissions Regarding Remedy, the Public Interest, and Bonding. As noted above, the Commission affirmed the ID’s finding that there is a violation of section 337 with respect to Aster and Defaulting Respondents. The Commission also finds that the statutory requirements for issuance of a GEO under section 337(d)(2) are met. See 19 U.S.C. 1337(d)(2). The Commission further finds that issuance of CDOs against Aster and 19 of the defaulting respondents (noted below) is appropriate under section 337(f)(1). See 19 U.S.C. 1337(f)(1). In addition, the Commission finds that the public interest factors do not preclude issuance of the requested relief. See 19 U.S.C. 1337(d)(1), (f)(1). The Commission therefore has determined that the appropriate remedy in this investigation is: (1) a GEO prohibiting the unlicensed importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent; and (2) CDOs directed to Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. The Commission has also determined that the bond during the period of Presidential review shall be in the amount of the following percentages of the entered value for respondents AMI, Aster, and Globest: Infringing Products AMI Aster Globest Accused 221/225 Products 568% 1463% 900% Accused 223/227 Products 274% 336% 372% Accused 420/450 Products - 623% 682% Accused 630/660 Products 575% 886% 635% Accused 730/760/770 Products 589% 354% 369% The bond for all other infringing articles shall be in the amount of one hundred percent (100%) of the entered value. The Commission’s orders were delivered to the President and to the United States Trade Representative on the day of their issuance. The investigation is terminated. 1 The Chair granted Brother’s motion for leave to file one day late. Brother filed on time but inadvertently omitted to include the certificate of service. Brother corrected the omission the next day.
5 While temporary remote operating procedures are in place in response to COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). The Commission vote for this determination took place on November 23, 2020. 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. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 GENERAL EXCLUSION ORDER The United States International Trade Commission (“Commission”) has determined that there is a violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in the unlawful importation, sale for importation, or sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same (as defined in paragraph 2 below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Having reviewed the record in this investigation, including the written submissions of the parties, the Commission has made its determination on the issues of remedy, the public interest, and bonding. The Commission has determined that a general exclusion from entry for consumption is necessary (1) to prevent circumvention of an exclusion order limited to products of named persons and (2) because there is a pattern of violation of Section 337 and it is difficult to identify the source of the infringing products. Accordingly, the Commission has determined
2 to issue a general exclusion order prohibiting the unlicensed importation of infringing toner cartridges, components thereof, and systems containing same. The Commission has also determined that the public interest factors enumerated in 19 U.S.C. § 1337(d) do not preclude the issuance of the general exclusion order. The bond during the period of Presidential review shall be in the amount of the following percentages of the entered value for respondents AMI Brother, Inc. (“AMI”), Aster Graphics, Inc. (“Aster”), and Globest Trading Inc. (“Globest”): Infringing Products AMI Aster Globest Accused 221/225 Products 568% 1463% 900% Accused 223/227 Products 274% 336% 372% Accused 420/450 Products - 623% 682% Accused 630/660 Products 575% 886% 635% Accused 730/760/770 Products 589% 354% 369% The bond during the period of Presidential review shall be in the amount of one hundred (100%) percent of the entered value for all other infringing articles subject to this Order. Accordingly, the Commission hereby ORDERS that: 1. Toner cartridges, components thereof, and systems containing same (as defined in paragraph 2 below) that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent are excluded from entry for consumption into the United States, entry for consumption from a foreign trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the patents, except under license from, or with the permission of, the patent owner or as provided by law. 2. The toner cartridges, components thereof, and systems containing the same that are subject to this Order (i.e., “covered articles”) are as follows: laser toner
3 cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). 3. Notwithstanding paragraph 1 of this Order, covered articles are entitled to entry into the United States for consumption, entry for consumption from a foreign- trade zone, or withdrawal from a warehouse for consumption under bond in the amount of the following percentages of the entered value for respondents AMI, Aster, and Globest: Infringing Products AMI Aster Globest Accused 221/225 Products 568% 1463% 900% Accused 223/227 Products 274% 336% 372% Accused 420/450 Products - 623% 682% Accused 630/660 Products 575% 886% 635% Accused 730/760/770 Products 589% 354% 369% and in the amount of one hundred percent (100%) of the entered value for all other covered articles, pursuant to subsection (j) of Section 337 (19 U.S.C. § 1337(j)) and the Presidential Memorandum for the United States Trade Representative of July 21, 2005 (70 Fed. Reg. 43,251), from the day after this Order is received by the United States Trade Representative until such time as the United States Trade Representative notifies the Commission that this Order is approved or disapproved but, in any event, not later than sixty (60) days after the date of receipt of this Order. All entries of covered articles made pursuant to this paragraph are to be reported to U.S. Customs and Border Protection (“CBP”), in advance of the date of the entry, pursuant to procedures CBP establishes.
4 4. At the discretion of CBP and pursuant to the procedures it establishes, persons seeking to import covered articles that are potentially subject to this Order may be required to certify that they are familiar with the terms of this 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 paragraph 1 of this Order. At its discretion, CBP may require persons who have provided the certification described in this paragraph to furnish such records or analyses as are necessary to substantiate the certification. 5. In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not apply to covered articles that are imported by and for the use of the United States, or imported for, and to be used for, the United States with the authorization or consent of the Government. 6. The Commission may modify this Order in accordance with the procedures described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). 7. The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rule 201.16(a) and 210.7(a)(1) (19 C.F.R. §§ 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a
5 method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). 8. Notice of this Order shall be published in the Federal Register. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Greencycle Tech, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Greencycle Tech, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 24, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Zhuhai Xiaohui E-Commerce Co., Ltd. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Zhuhai Xiaohui E-Commerce Co., Ltd. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Super Warehouse Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Super Warehouse Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Solong E-Commerce Co., LLC cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Solong E-Commerce Co., LLC. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Smartjet E-Commerce Co., LLC cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Smartjet E-Commerce Co., LLC. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Mangoket LLC cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Mangoket LLC. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT LD Products, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean LD Products, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT IPrint Enterprise Limited cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean IPrint Enterprise Limited. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Intercon International Corp. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Intercon International Corp. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Ikong E-Commerce cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Ikong E-Commerce. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT I8 International, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean I8 International, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Hongkong Boze Co., Ltd. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Hongkong Boze Co., Ltd. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Globest Trading Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Globest Trading Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 900 percent of entered value for infringing 221/225 Products, 372 percent of entered value for infringing 223/227 Products, 682 percent of entered value for infringing 420/450 Products, 635 percent of entered value for infringing 630/660 Products, and 369 percent of entered value for infringing 730/760/770 Products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
8 imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision. The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service 2 See Footnote 1.
9 on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Eco Imaging Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Eco Imaging Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Ecoolsmart Co. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Ecoolsmart Co. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Do it Wiser, LLC cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Do it Wiser, LLC. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Carlos Imaging Supplies, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Carlos Imaging Supplies, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Billiontree Technology USA Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Billiontree Technology USA Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 100 percent of the entered value of the covered products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision.
8 The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. 2 See Footnote 1.
9 By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT AMI Brothers, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean AMI Brothers, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 568 percent of entered value for infringing 221/225 Products, 274 percent of entered value for infringing 223/227 Products, 575 percent of entered value for infringing 630/660 Products, and 589 percent of entered value for infringing 730/760/770 Products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products imported on or after the date of issuance of this Order are
8 subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision. The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service 2 See Footnote 1.
9 on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 CEASE AND DESIST ORDER IT IS HEREBY ORDERED THAT Aster Graphics, Inc. cease and desist from conducting any of the following activities in the United States: importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United States agents or distributors, and aiding or abetting other entities in the importation, sale for importation, sale after importation, transfer (except for exportation), or distribution of toner cartridges, components thereof, and systems containing same (as defined in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337). I. Definitions As used in this order: (A) “Commission” shall mean the United States International Trade Commission.
2 (B) “Complainants” shall mean Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (C) “Respondent” shall mean Aster Graphics, Inc. (D) “Person” shall mean an individual, or any non-governmental partnership, firm, association, corporation, or other legal or business entity other than Respondent or its majority-owned or controlled subsidiaries, successors, or assigns. (E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. (F) The terms “import” and “importation” refer to importation for entry for consumption under the Customs laws of the United States. (G) The term “covered products” shall mean toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12- 15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and systems containing the same that are subject to this Order are as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (“Multi-Function Centers”). Covered products shall not include articles for which a provision of law or license avoids liability for infringement. II. Applicability The provisions of this Cease and Desist Order shall apply to Respondent and to any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled (whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3 assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III, infra, for, with, or otherwise on behalf of, Respondent. III. Conduct Prohibited The following conduct of Respondent in the United States is prohibited by this Order. For the remaining terms of the Asserted Patents, Respondent shall not: (A) import or sell for importation into the United States covered products; (B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation) in the United States imported covered products; (C) advertise imported covered products; (D) solicit U.S. agents or distributors for imported covered products; or (E) aid or abet other entities in the importation, sale for importation, sale after importation, transfer, or distribution of covered products. IV. Conduct Permitted Notwithstanding any other provision of this Order, specific conduct otherwise prohibited by the terms of this Order shall be permitted if: (A) in a written instrument, the owner of the Asserted Patents licenses or authorizes such specific conduct; or (B) such specific conduct is related to the importation or sale of covered products by or for the United States. V. Reporting For purposes of this requirement, the reporting periods shall commence on January 1 of each year and shall end on the subsequent December 31. The first report required under this
4 section shall cover the period from the date of issuance of this order through December 31, 2020. This reporting requirement shall continue in force until such time as Respondent has truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered products in the United States. Within thirty (30) days of the last day of the reporting period, Respondent shall report to the Commission: (a) the quantity in units and the value in dollars of covered products that it has (i) imported and/or (ii) sold in the United States after importation during the reporting period, and (b) the quantity in units and value in dollars of reported covered products that remain in inventory in the United States at the end of the reporting period. When filing written submissions, Respondent must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19, 2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf. Persons with questions regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a document to the Commission in confidence, it must file the original and a public version of the original with the Office of the Secretary and must serve a copy of the confidential version on Complainant’s counsel.1 1 Complainants must file a letter with the Secretary identifying the attorney to receive reports and bond information associated with this Order. The designated attorney must be on the protective order entered in the investigation.
5 Any failure to make the required report or the filing of any false or inaccurate report shall constitute a violation of this Order, and the submission of a false or inaccurate report may be referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001. VI. Record-Keeping and Inspection (A) For the purpose of securing compliance with this Order, Respondent shall retain any and all records relating to the sale, offer for sale, marketing, or distribution in the United States of covered products, made and received in the usual and ordinary course of business, whether in detail or in summary form, for a period of three (3) years from the close of the fiscal year to which they pertain. (B) For the purposes of determining or securing compliance with this Order and for no other purpose, subject to any privilege recognized by the federal courts of the United States, and upon reasonable written notice by the Commission or its staff, duly authorized representatives of the Commission shall be permitted access and the right to inspect and copy, in Respondent’s principal offices during office hours, and in the presence of counsel or other representatives if Respondent so chooses, all books, ledgers, accounts, correspondence, memoranda, and other records and documents, in detail and in summary form, that must be retained under subparagraph VI(A) of this Order. VII. Service of Cease and Desist Order The Secretary shall serve copies of this Order upon each party of record in this investigation that has retained counsel or otherwise provided a point of contact for electronic service and upon CBP. While temporary remote operating procedures are in place in response to
6 COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the Complainant complete service of this Order for any party without a method of electronic service noted on the attached Certificate of Service and shall file proof of service on the Electronic Document Information System (EDIS). Respondent is ordered and directed to: (A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this Order upon each of its respective officers, directors, managing agents, agents, and employees who have any responsibility for the importation, marketing, distribution, or sale of imported covered products in the United States; (B) Serve, within fifteen (15) days after the succession of any persons referred to in subparagraph VII(A) of this order, a copy of the Order upon each successor; and (C) Maintain such records as will show the name, title, and address of each person upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this order, together with the date on which service was made. The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until the expiration of the Asserted Patents. VIII. Confidentiality Any request for confidential treatment of information obtained by the Commission pursuant to section VI of this order should be made in accordance with section 201.6 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7 confidential treatment is sought, Respondent must provide a public version of such report with confidential information redacted. IX. Enforcement Violation of this order may result in any of the actions specified in section 210.75 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other action that the Commission deems appropriate. In determining whether Respondent is in violation of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate or timely information. X. Modification The Commission may amend this order on its own motion or in accordance with the procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.76). XI. Bonding The conduct prohibited by section III of this order may be continued during the sixty (60) day period in which this Order is under review by the United States Trade Representative, as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting of a bond in the amount of 1463 percent of entered value for infringing 221/225 Products, 336 percent of entered value for infringing 223/227 Products, 623 percent of entered value for infringing 420/450 Products, 886 percent of entered value for infringing 630/660 Products, and 354 percent of entered value for infringing 730/760/770 Products. This bond provision does not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
8 imported on or after the date of issuance of this Order are subject to the entry bond as set forth in the exclusion order issued by the Commission, and are not subject to this bond provision. The bond is to be posted in accordance with the procedures established by the Commission for the posting of bonds by complainants in connection with the issuance of temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying documentation are to be provided to and approved by the Commission prior to the commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on Complainant’s counsel.2 The bond is to be forfeited in the event that the United States Trade Representative approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission. This bond is to be released in the event (i) the United States Trade Representative disapproves this Order and no subsequent order is issued by the Commission and approved (or not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final determination and order as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this bond and provides certification to that effect that is satisfactory to the Commission, upon service 2 See Footnote 1.
9 on Respondent of an order issued by the Commission based upon application therefor made by Respondent to the Commission. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on November 23, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
1 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 COMMISSION OPINION The Commission has determined that there has been a violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), with respect to claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) by 21 defaulting respondents and one participating respondent. The Commission has determined that the appropriate form of relief is (1) a general exclusion order (“GEO”) prohibiting the unlicensed importation of certain toner cartridges, components thereof, and systems containing same that infringe the asserted claims and (2) cease and desist orders (“CDOs”) directed to 20 respondents (listed below). The Commission finds that the public interest factors do not preclude the issuance of the remedial orders. Finally, the Commission has determined to set the bond during the period of Presidential review at varying percentages of the entered value of the subject articles as discussed herein. This opinion sets forth the Commission’s reasoning in support of its determinations as to remedy, bonding, and the public interest.
2 I. BACKGROUND A. Procedural History On September 23, 2019, the Commission instituted this investigation based on a complaint filed by Brother Industries, Ltd. of Nagoya Japan; Brother International Corp. (U.S.A.) of Bridgewater, New Jersey; and Brother Industries (U.S.A.), Inc. of Bartlett, Tennessee (collectively, “Brother”). 84 Fed. Reg. 49762-63 (Sept. 23, 2019). The complaint alleged violations of section 337 based on the importation into the United States, the sale for importation, or the sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same by reason of infringement of claims 1-7 and 9 of the ’856 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1, 4, 5, and 9 of the ’456 patent; claims 1-5, 10, and 12-15 of the ’093 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. The Commission’s notice of investigation named the following 32 respondents: AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty Limited of Kowloon, Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside, California (“Aster”); Aztech Enterprises Limited of Kowloon, Hong Kong (“Aztech”); Billiontree Technology USA Inc. of City of Industry, California (“Billiontree”); Carlos Imaging Supplies, Inc. of Hacienda Heights, California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”); Eco Imaging Inc. of Irvine, California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights, California (“Ecoolsmart”); EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Greencycle Tech, Inc. of South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd. of Kowloon, Hong Kong (“Hongkong Boze”); I8 International, Inc. of City of Industry, California (“I8”); IFree E- Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E-Commerce of Walnut, California
3 (“Ikong”); Intercon International Corp. of Brea, California (“Intercon”); IPrint Enterprise Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of Long Beach, California (“LD Products”); Linkyo Corp. of La Puente, California (“Linkyo”); Mangoket LLC of Alhambra, California (“Mangoket”); New Era Image LLC of Corona, California (“New Era”); OW Supplies Corp. of Corona, California (“OW Supplies”); Solong E-Commerce Co., LLC of Wan Chai, Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of Wan Chai, Hong Kong (“Smartjet”); Super Warehouse Inc. of Blaine, Washington (“Super Warehouse”); Theresa Meng of Brooklyn, New York (“Ms. Meng”); Triple Best LLC of San Diego, California (“Triple Best”); V4ink, Inc. of Diamond Bar, California (“V4ink”); and Zhuhai Xiaohui E-Commerce Co., Ltd. of Zhuhai, China (“Xiaohui”). Id. at 49762-63. The notice of investigation also names the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 49763. Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however, did not oppose Brother’s summary determination motion of a Section 337 violation as to the accused products, even though Aster’s products are subject to the motion.1 EPS and IFree were terminated from the investigation based upon withdrawal of the complaint against them.2 Cartridge Evolution, E-Z Ink, Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and V4ink were terminated from the investigation based upon entry of consent orders.3 The 1 See Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation (Mar. 4, 2020). 2 See Order No. 32 (Jan. 28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020). 3 See Order No. 36 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No 38 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 37 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 10 (Oct. 18, 2019), unreviewed by Comm’n Notice (Nov. 6, 2019); Order No. 17 (Nov. 21, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 28 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020); Order No. 18 (Nov. 27, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 33 (Feb. 3, 2020), unreviewed by Comm’n Notice (Mar. 4, 2020).
4 following 21 respondents defaulted: AMI, Globest, An An Beauty, Aztech, Xiaohui, Ecoolsmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse, and LD Products (collectively, “Defaulting Respondents”).4 On March 12, 2020, Brother filed a motion for summary determination of violation of section 337 by Aster and the Defaulting Respondents and for a recommendation that the Commission issue a general exclusion order and cease and desist orders.5 On March 23, 2020, OUII filed a response in support of Brother’s motion.6 No respondent filed a response to Brother’s motion. On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (“ID”) (Order No. 40), granting Brother’s motion for summary determination of a violation of section 337 by Aster and the Defaulting Respondents. The ID found that the Commission has subject matter jurisdiction over the investigation. ID at 34. The ID further found that none of the respondents contest the Commission’s personal jurisdiction over them or in rem jurisdiction as to the accused products. ID at 34-35. The ID found that Brother: (1) established the importation requirement as to Aster and the Defaulting Respondents, ID at 36-79; (2) demonstrated that the accused products practice the asserted claims, id. at 118-133; 4 See Order No. 35 (Mar. 5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019). 5 See Complainants’ Motion for Summary Determination of Violation and for Recommended Determination on Remedy and Bonding (“Brother Motion”). 6 See Commission Investigative Staff’s Response to Brother’s Motion for Summary Determination of Violation (“OUII Response”).
5 (3) demonstrated that the domestic industry (“DI”) products practice at least one claim of each asserted patent; and (4) that a DI exists in the United States, id. at 84-118. The ALJ’s Recommended Determination (“RD”) on remedy and bonding recommended issuance of a GEO (or, in the alternative, a limited exclusion order (“LEO”) directed to Aster and each of the Defaulting Respondents). Id. at 134-44. The RD further recommended issuing CDOs directed to Aster and each defaulting respondent that has domestic operations. Id. at 144-46. The RD also recommended setting different bond rates for entry of the different products covered by the GEO during the period of Presidential review, based on stipulations between Brother and certain respondents. Id. at 146-48 (recommended bond rate table at 147 of the ID). No one petitioned for review of the ID. On September 8, 2020, the Commission determined not to review the ID and requested written submissions on remedy, the public interest, and bonding. 85 Fed. Reg. 56628-31 (Sept. 14, 2020). On August 24, 2020, Aster filed a public interest statement in response to the Commission’s notice soliciting public interest comments pursuant to 19 C.F.R. § 210.50(a)(4)(i). In its submission, Aster argued that any Commission remedial orders issued in this investigation should not cover its new products pursuant to its stipulation with Brother.7 On August 26, 2020, Brother filed a response.8 The Commission rejected Aster’s August 24, 2020 public interest submission as improper under 19 C.F.R. § 210.50(a)(4)(i). Id. at 56630. The Commission noted that while 19 C.F.R. § 210.50(a)(4)(i) provides that parties may file information with the Commission relating to the public interest, Aster’s submission concerned the scope of the 7 See Respondent Aster Graphics, Inc.’s Statement of Public Interest. 8 See Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond.
6 remedy and thus did not fall within the ambit of the public interest submissions provided for under 19 C.F.R. § 210.50(a)(4)(i). Id. The Commission stated that “Aster will have an opportunity to raise its arguments regarding the scope of any remedial orders in a remedy submission before the Commission in response to the instant notice, which invites parties to file submissions addressing remedy, bonding and the public interest as noted below.” Id. On September 22, 2020, Brother, Aster, and OUII filed initial submissions in response to the Commission’s request.9 On September 29, 2020, the parties filed reply submissions.10 B. The Asserted Patents The technology at issue is laser toner cartridges designed for use with Brother printers, fax machines, and Multi-Function Centers (“MFCs”).11 Printers, fax machines, and MFCs use toner cartridges to print images on paper or other such materials. ID at 17. Toner is transferred from the toner cartridge to paper through a system of electrically charged components. Id. A toner cartridge generally includes a toner hopper, an agitator, a developing chamber, a supply roller, and a developing roller. Id. at 18. Toner is stored in the toner hopper and moved to the supply roller when the agitator rotates. Id. The supply roller and the developing roller include electrodes that charge the toner with a positive electrostatic charge. Id. The charged toner is 9 See Complainants’ Submission on Remedy, the Public Interest, and Bonding (“Brother Sub.”); Respondent Aster Graphics, Inc.’s Submission on Remedy, the Public Interest and Bonding (“Aster Sub.”); Response of the Office of Unfair Import Investigations to the Commission’s Request for Written Submissions Regarding Remedy, the Public Interest, and Bonding (“OUII Sub.”). 10 See Respondent Aster Graphics, Inc.’s Reply to the Submission of the Office of Unfair Import Investigations and Complainants on Remedy, the Public Interest and Bonding (“Aster Rep.”); Reply of the Office of Unfair Import Investigations to the Private Parties’ Written Submissions Regarding Remedy, the Public Interest, and Bonding (“OUII Rep.”); Complainants’ Reply Submission on Remedy, the Public Interest, and Bonding (“Brother Rep.”). The Chair granted Brother’s motion for leave to file its reply one day late. Brother filed on time but inadvertently omitted to include the certificate of service. Brother corrected the omission the next day. 11 MFCs are printer/copier/scanner/fax combinations.
7 deposited in the desired pattern on a photosensitive drum, where it is then transferred onto paper. Id. The Asserted Patents are directed to toner cartridges with certain features, including a detection gear (shown below), a supply roller electrode, and a developing roller electrode. ID at 20. The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a detection gear, while the asserted claims of the ’456 and ’856 patents are directed to various aspects of the supply roller electrode and developing roller electrode (shown below). Id.
8 The ’093 patent, entitled “Developing Cartridge Including Developing Roller Having Developing Roller Shaft,” issued on October 10, 2019. The patent generally relates to a developing cartridge that is reduced in size and can be prevented from being damaged. ’093 patent, col. 1, ll. 50-52. Brother asserts claims 1-5, 10, and 12-15. The ’460 patent entitled “Developer Cartridge Having Developing Roller and Electrode,” issued on February 21, 2017. The patent generally relates to a developer cartridge “whose information can be detected with a simpler configuration.” ’460 patent, col. 1, ll. 51-53. Brother asserts claims 1, 7-11, 15, and 16. The ’387 patent entitled “Developing Cartridge Having Coupling and Developing Roller,” issued on December 19, 2017. The patent generally relates to a smaller developing cartridge that has a cartridge frame, a driving unit, and an electric-power supplying unit. ’387 patent, col. 6, ll. 30-35. Brother asserts claims 1, 3, 5, 7-12, and 18. The ’456 patent entitled “Developing Cartridge,” issued on April 25, 2017. The patent generally relates to a thin developing cartridge that provides individual electrodes to a developing roller and a supply roller. ’456 patent, col. 2, ll.13-15. Brother asserts claims 1-7 and 9.
9 The ’856 patent entitled “Developing Cartridge,” issued on February 14, 2017. The patent generally relates to a thin developing cartridge that provides individual electrodes to a developing roller and a supply roller. ’856 patent col. 2, ll. 13-15. Brother asserts claims 1, 4, 5, and 9. C. Products at Issue 1. The Domestic Industry Products According to Brother, it offers five lines of toner cartridges for sale in the United States that utilize the technology of the asserted patents: the “DCL,” “ECL,” “BLL,” “DLL,” and “ELL” lines (collectively the “Covered Cartridges”). ID at 21 (citing Cummins Decl. ¶¶ 81- 106). The ALJ observed that the toner cartridges in Brother’s DCL line can be identified by model numbers TN-221BK, TN-221C, TN-221M, TN- 221Y, TN-225C, TN-225M, and TN- 225Y (collectively, the “Covered 221/225 Cartridges”). Id. The toner cartridges in Brother’s ECL line can be identified by model numbers TN-223BK, TN-223C, TN-223M, TN-223Y, TN- 227BK, TN-227C, TN-227M, TN-227Y (collectively, the “Covered 223/227 Cartridges”). Id. The toner cartridges in Brother’s BLL line can be identified by model numbers TN-420 and TN- 450 (collectively, the “Covered 420/450 Cartridges”). Id. The toner cartridges in Brother’s DLL line can be identified by model numbers TN-630 and TN-660 (collectively, the “Covered 630/660 Cartridges”). Id. Finally, toner cartridges in Brother’s ELL line can be identified by model numbers TN-730, TN-760, and TN-770 (collectively, the “Covered 730/760/770 Cartridges”). Id. The ALJ noted that “[w]ithin each product line, Brother’s toner cartridges are identical to each other in all respects relevant to this investigation.” Id. at 22. The ALJ further noted that “[t]he primary difference between the toner cartridges in the DCL and ECL lines is that the model numbers with ‘BK,’ ‘C,’ ‘M,’ and ‘Y’ suffixes hold black, cyan, magenta, and yellow toner, respectively, and the toner cartridges with higher model numbers (e.g., TN-225C)
10 are filled with more toner than those with lower model numbers (e.g., TN-221C)” and “[t]he toner cartridges with higher model numbers in the BLL, DLL, and ELL lines also are filled with more toner than those with lower model numbers,” but that “all model numbers within the BLL, DLL, and ELL lines are filled with black toner.” Brother’s DCL, ECL, BLL, DLL, and ELL product lines also include compatible printers, fax machines, and MFCs with corresponding model numbers (“Related Products”). Id. 2. The Infringing Products The infringing products are toner cartridges designed to be compatible with Brother’s printers, fax machines, and MFCs in the DCL, ECL, BLL, DLL, and ECL product lines. The Commission found that the Accused 221/225 and 223/225 Cartridges infringe at least claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. ID at 123-26. The Commission found that the Accused 420/450 and 630/660 Cartridges infringe at least claims 1-7 and 9 of the ’456 patent; and claims 1, 4, 5, and 9 of the ’856 patent. Id. at 126-31. The Commission found that the Accused 730/760/770 Cartridges infringe at least claims 1-7 and 9 of the ’456 patent; claims 1, 4, 5, and 9 of the ’856 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 131-33 The Commission found that the TN-225 model is representative of the TN-221 model and that the TN-227 model is representative of the TN-223 model. Based on this, Brother’s expert, Jarrett Gayne, identified the Accused Group 1 Products by TN-225 and TN-227 compatible brands, as shown below:
11 ID at 25-26. Similarly, the Commission found that the TN-450 model is representative of the TN-420 model, the TN-660 model is representative of the TN-630 model, and the TN-760 model is representative of the TN-730 and TN-770 models. Based on this, Brother’s expert, Dr. Grune, identified the Accused Group 2 Products by TN-450, TN-660, and TN-760 compatible brands, as shown below:
12 ID at 27-28. Brother’s expert, Jarrett Gayne, grouped TN-225, TN-227, and TN-760 compatible brands into Accused Group 3 Products as shown below:
13 The evidence supporting the Commission’s infringement findings is set forth in the ID at 118-33. II. REMEDY In section 337 proceedings, the Commission has “broad discretion in selecting the form, scope, and extent of the remedy.” See Viscofan, S.A. v. United States Int ’l Trade Comm ’n, 787 F.2d 544, 548 (Fed. Cir. 1986). Where a violation is found, the Commission generally issues a limited exclusion order directed to products imported by persons found in violation of the statute. In certain circumstances, however, the Commission may issue a GEO directed to all infringing products. See 19 U.S.C. § 1337(d)(2). In conjunction with (or in lieu of) an exclusion order, the
14 Commission may also issue orders directing persons found in violation of section 337 “to cease and desist from engaging in the unfair methods or acts involved.” 19 U.S.C. § 1337(f). A. General Exclusion Order Under section 337(d)(2), the Commission may issue a GEO barring the entry of infringing goods, regardless of the source, if the Commission determines that either of the following requirements is met: (A) a general exclusion from entry of articles is necessary to prevent circumvention of an exclusion order limited to products of named persons; or (B) there is a pattern of violation of this section and it is difficult to identify the source of infringing products. 19 U.S.C. § 1337(d)(2); Certain Cigarettes and Packaging Thereof, Inv. No. 337-TA-643, Comm’n Op. at 24 (Oct. 1, 2009). In evaluating whether either criterion is satisfied, the Commission may look not only to the activities of active respondents, but also to those of non- respondents as well as respondents who have defaulted or been terminated from the investigation. Certain Elec. Paper Towel Dispensing Devices and Components Thereof (“Towel Dispensers”), Inv. No. 337-TA-718, Comm’n Op. at 16 (Jan. 20, 2012). The ALJ recommended that the Commission issue a GEO under both 19 U.S.C. §§ 1337(d)(2)(A) and (B). RD at 135-43. According to the ALJ, “[t]he undisputed record in this investigation closely tracks the facts of prior Commission investigations into the same industry” in which the Commission issued GEOs. Id.; see, e.g., Certain Toner Cartridges, and Components Thereof (“Toner Cartridges IV”), Inv. No. 337-TA-918, Comm’n Op. at 6 (Oct. 1, 2015). The RD found that the criteria for obtaining a GEO under section 337(d)(2)(A) are satisfied. The RD stated that “[a]s in prior investigations in this industry, such as Toner
15 Cartridges IV, Inv. No. 337-TA-918, Comm’n Op. at 7 (Oct. 1, 2015), several of the Respondents here sell Accused Products under multiple names on Amazon.com” and that “[i]f limited exclusion orders were directed to the entities named as Respondents in this investigation, it is likely that the same entities would continue online sales and importation using different names.” RD at 137 (citing Ex. 5 at ¶¶ 3.34, 3.39, 3.53, 3.62, 3.69, 3.78, 3.148; Exs. 5-36, 5-41, 5-66, 5-77, 5-87, 5-99, 5-186 (examples of Amazon storefronts of respondents); Globest Import. Stip. at ¶¶ 6, 7 (Globest admission of importation through Amazon.com)). Likewise, the RD found that the criteria for obtaining a GEO under section 337(d)(2)(B) were satisfied. According to the RD, “there are numerous ‘reseller’ customers in the business of distributing infringing toner cartridges in the United States” and that “[n]on-party [[ ]] [manufacturer of accused products] [[ ]] Id. (citing Ex. 59 ([[ ]]), at 1, 3, 4, 6). The RD further noted that “Print-Rite, another non-party supplier, identifies nineteen customers of Accused Products in the United States, including Respondents Do It Wiser, LD Products, Linkyo, and V4ink” and that “Aster acknowledges that it supplies Accused Products to at least eight of the Defaulting Respondents— An An Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket.” Id. (citing Ex. 57 at ¶ 6 (Jan. 17, 2020); Ex. 38, Response of Aster Graphics, Inc. to Complaint and Notice of Investigation at ¶ 3.26 (Oct. 18, 2019)). The RD concluded that “[t]his multiplicity of suppliers and distributors of infringing toner cartridges qualitatively demonstrates a widespread pattern of violation.” ID at 141. Alternatively, the RD stated that “[s]hould the Commission find a violation and determine not to issue a general exclusion order, I recommend that the Commission issue limited
16 exclusion orders directed to respondents Aster, An An Beauty, AMI, Aztech, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui.” Id. at 144. According to the RD, “[t]he undisputed evidence supports a determination that Respondents have violated section 337, so the condition precedent for limited exclusion orders has been satisfied.” Id. The Commission agrees with the ALJ that the requirements of section 337(d)(2) are met (as explained below), warranting the issuance of a GEO in this investigation. Accordingly, the Commission has determined to issue a GEO prohibiting the unlicensed importation from any source of certain toner cartridges, components thereof, and systems containing same that infringe one or more of the asserted claims. 1. A GEO Is Necessary to Prevent Circumvention of a Limited Exclusion Order Under section 337(d)(2)(A), the Commission considers whether “conditions are ripe for circumvention of a limited exclusion order.” Towel Dispensers, Comm’n Op. at 16. In determining whether conditions are ripe for circumvention, the Commission has considered whether it is difficult to identify sellers or manufacturers, whether previous attempts to address infringement have been unsuccessful, and whether infringing operations could be easily replicated. See, e.g., Toner Cartridges IV, Comm’n Op. at 6; Certain Pocket Lighters, 337-TA- 1142, ID at 40-43 (Feb. 12, 2020). We agree with the ALJ that “based on the record evidence of the past and present business practices of the Respondents that a limited exclusion order would be easily circumvented” and therefore that a GEO is necessary. RD at 139. Specifically, as the ALJ found, the evidence shows that foreign aftermarket toner cartridge manufacturers, such as Aster’s parent company, have the capacity to replicate their
17 operations to appear as a new business within a few months. ID at 136-37. The ALJ further found that the parent company of Aster was set up by a management company that entered into a consent order stipulation in investigation number 337-TA-731 and was mass producing infringing toner cartridges within a month. ID at 136; see also Certain Toner Cartridges and Components Thereof, Inv. No. 337-TA-829, Order No. 25, ID at 120 (Feb. 28, 2013) (“Toner Cartridges”). The ALJ concluded that this shows that the same scenario involving toner cartridges could repeat itself if the Commission does not issue a GEO. RD at 136-37. The ALJ surmised that “[a]s in prior investigations in this industry, such as Toner Cartridges IV, Inv. No. 337-TA-918, Comm’n Op. at 7, several of the Respondents here sell Accused Products under multiple names on Amazon.com” and that “[i]f limited exclusion orders were directed to the entities named as Respondents in this investigation, it is likely that the same entities would continue online sales and importation using different names.” RD at 137 (citing Ex. 5 at ¶¶ 3.34, 3.39, 3.53, 3.62, 3.69, 3.78, 3.148; Exs. 5-36, 5-41, 5-66, 5-77, 5-87, 5-99, 5-186 (examples of Amazon storefronts of respondents); Globest Import. Stip. at ¶¶ 6, 7 (Globest admission of importation through Amazon.com)). This evidence is undisputed. 2. A GEO Is Warranted Based on a Pattern of Violation and Difficulty Identifying Sources of Infringing Products Section 337(d)(2)(B) permits the issuance of a general exclusion order where there is a pattern of violation of section 337 and it is difficult to identify the source of the infringing goods. As the ALJ found, Brother “established by substantial, reliable, and probative evidence a pattern of violation of section 337 by sources that are difficult to identify.” RD at 143. The evidence shows that there are numerous suppliers and distributors of infringing toner cartridges in addition to the Respondents, including, for example, numerous “reseller” customers that distribute
18 infringing toner cartridges to potentially hundreds of customers in the United States. RD at 140- 41. For example, “[n]on-party [[ ]] RD at 141 (citing Ex. 59 ([[ ]]), at 1, 3, 4, 6). “Print-Rite, another non-party supplier, identifies nineteen customers of Accused Products in the United States, including Respondents Do It Wiser, LD Products, Linkyo, and V4ink” and “Aster acknowledges that it supplies Accused Products to at least eight of the Defaulting Respondents—An An Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket.” Id. (citing Ex. 57 at ¶ 6 (Jan. 17, 2020); Ex. 38, Response of Aster Graphics, Inc. to Complaint and Notice of Investigation at ¶ 3.26 (Oct. 18, 2019)). We agree with the RD’s conclusion that “[t]his multiplicity of suppliers and distributors of infringing toner cartridges qualitatively demonstrates a widespread pattern of violation.” RD at 141. In addition, the evidence shows that the sources of infringing products are difficult to identify. RD at 141. As the ALJ found, Aster provides private labelling and custom packaging to its customers, which, while a legitimate practice, obscures the identity of the original manufacturer. Id. The evidence further shows that “respondents An An Beauty, Aztech, Billiontree, Eco Imaging, Globest, Hongkong Boze, I8, IPrint, and Super Warehouse each package their Accused Products in generic boxes marked only as ‘toner,’ ‘toner cartridge,’ ‘premium toner cartridge,’ ‘laser toner cartridge,’ or ‘laser printer toner cartridge,’ omitting any identifiable branding tying their products to their origins.” Id. at 141-42. The ALJ further found that the “channels of commerce Respondents use also help conceal the identity of infringers,” as shown by their use of popular e-commerce sites like Amazon.com, eBay.com, and Alibaba.com. Id. at 142. The record shows that Respondents AMI, Do It Wiser, Eco Imaging, Ecoolsmart,
19 Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, Mangoket, Solong, Smartjet, SuperWarehouse, and Xiaohui all shipped Accused Products through an Amazon fulfillment center, with only the address of the fulfillment center appearing on the shipping materials. Id. Nothing in the record contradicts any of this evidence. The record evidence thus establishes that issuance of a GEO is warranted. B. Cease and Desist Orders In conjunction with (or in lieu of) an exclusion order, the Commission may also issue orders directing persons found in violation of section 337 “to cease and desist from engaging in the unfair methods or acts involved.” 19 U.S.C. § 1337(f). The Commission generally issues a CDO when the evidence shows that the respondent maintains “commercially significant” inventory of imported infringing products for that respondent in the United States or has significant domestic operations that could undercut the remedy provided by an exclusion order. See, e.g., Certain Elec. Skin Care Devices, Brushes & Chargers Therefor, & Kits Containing the Same, Inv. No. 337-TA-959, Comm’n Op., 2017 WL 8683854, *16 (Feb. 13, 2017). The RD recommended that the Commission grant Brother’s request to issue cease and desist orders against respondents with addresses or operations based in the United States, namely Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. RD at 144. The RD noted that the record shows that Aster maintains commercially significant inventory in the United States. RD at 145 (citing Aster Stipulation at Ex. A, shown below).
20 Accused Aster Product Domestic Inventory 221/225 [[ ]] 223/227 [[ ]] 420/450 [[ ]] 630/660 [[ ]] 730/760/770 [[ ]] The RD stated that “Brother adduced substantial, undisputed evidence” that “respondents AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart. Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, and Super Warehouse “each operates from addresses in the United States.” Id. Because they have all defaulted, “the commercial significance of their inventories may be inferred, and a cease and desist order is appropriate.” Id. (citing Certain Arrowheads with Deploying Blades & Components Thereof & Packaging Therefor, Inv. No. 337-TA-977, Comm’n Op. at 18 (Apr. 6, 2017). Moreover, Brother adduced substantial, undisputed evidence that U.S. based respondents AMI, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, 18, Ikong, Inercon, IPrint, Mangoket, and Super Warehouse as well as foreign respondents Hongkong Boze, Solong, Smartjet, and Xiaohui “each fulfills orders through Amazon.com fulfillment centers in the United States” and that the use of these U.S. fulfillment centers “allows an inference of commercially significant domestic inventory.” Id. at 145-46 (citing Certain Hand Dryers & Housing for Hand Dryers, Inv. No. 337-TA-1015, Comm’n Op. at 11 (Oct. 30, 2017) (“evidence that infringing . . . products sold on Amazon.com are fulfilled from an Amazon.com facility in Kentucky . . . supports the inference that [foreign defaulting respondents] maintain a commercially significant inventory of infringing articles in the United States” and that issuance of a cease and desist order is appropriate))). Brother does not request CDOs against foreign respondents An An Beauty and Aztech. Brother Motion at 197-98; Brother Sub. at 17-20. The
21 Commission agrees with the ALJ that cease and desist orders should issue as to the 20 respondents identified above for the reasons provided in the RD.12 13 12 In Commissioner Schmidtlein’s view, Brother’s request for CDOs against defaulting respondents LD Products, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Hongkong Boze, I8, Ikong, Intercon, IPrint, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui is governed by section 337(g)(1), rather than section 337(f)(1). Section 337(g)(1) governs because the conditions of subsections (A) through (E) are satisfied for each of those defaulting respondents. For example, each of those defaulting respondents was named in the complaint and each was served or refused service of the complaint and notice of investigation satisfying subsections 337(g)(1)(A)-(B). Further, each failed to file an answer to the complaint and failed to present good cause as to why default should not be found against them satisfying subsections 337(g)(1)(C)-(D). See Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019). Brother requested CDOs directed to each of those defaulting respondents thus satisfying subsection 337(g)(1)(E). Of those defaulting respondents, I8 and LD Products did participate in the investigation to a limited extent and/or file submissions, but Commissioner Schmidtlein finds that section 337(g)(1) still governs the request for CDO relief against I8 and LD Products. Specifically, I8 entered an appearance through counsel, but soon thereafter failed to participate in the investigation, including failing to respond to the complaint and a show cause order. See EDIS Doc IDs 690960; Order No. 25. LD Products filed a notice “that it will not be participating in the Investigation” and “will not oppose entry of default” and thereafter did not participate in the investigation, including failing to respond to the complaint. EDIS Doc ID 690803; Order No. 8. LD Products’ statement that it “will not oppose entry of default” satisfied the condition of subsection 337(g)(1)(D) and obviated the need under the Commission rules for the ALJ to issue a show cause order. See 19 C.F.R. § 210.16 (b)(3). In prior investigations, Commissioner Schmidtlein has explained her view that absent public interest considerations to the contrary the “shall, upon request, issue” language in section 337(g)(1) does not grant the Commission discretion to decline to issue a requested CDO when the conditions of subsections (A) through (E) are satisfied. See Certain Industrial Automation Systems and Components Thereof Including Control Systems, Controllers, Visualization Hardware, Motion and Motor Control Systems, Networking Equipment, Safety Devices, and Power Supplies, Inv. No. 337-TA-1074, Comm’n Op., Dissenting Views of Commissioner Schmidtlein (Apr. 23, 2019); Certain Water Filters and Components Thereof, Inv. No. 337-TA- 1126, Comm’n Op. at 10, n.1 (Nov. 12, 2019). Consistent with that view, Commissioner Schmidtlein finds that the Commission is required to issue the requested CDOs against LD Products, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Hongkong Boze, I8, Ikong, Intercon, IPrint, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui.
22 With respect to Respondents Aster, AMI, Greencycle, and Globest, Commissioner Schmidtlein agrees that section 337(f) governs the requested CDO relief because those four respondents responded to the complaint. See EDIS Doc. ID 690712 (AMI’s answer); EDIS Doc. ID 690720 (Globest’s answer); EDIS Doc ID 691633 (Aster’s answer); EDIS Doc ID 691808 (Greencycle answer). However, when the presence of infringing domestic inventory or domestic operations is asserted as the basis for a CDO under section 337(f)(1), Commissioner Schmidtlein does not adopt the view that the inventory or domestic operations needs to be “commercially significant” in order to issue the CDO. See, e.g., Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Certain Table Saws Incorporating Active Injury Mitigation Technology & Components Thereof, Inv. No. 338-TA-965, Comm’n Op., 2017 WL 1476193, *4 n.2 (Feb. 1, 2017). In Commissioner Schmidtlein’s view, the presence of some infringing domestic inventory or domestic operations, regardless of commercial significance, provides a basis to issue a CDO. Id. Because the record shows that Aster, AMI, Greencycle, and Globest maintain some domestic inventory or business operations in the United States Commissioner Schmidtlein supports issuance of CDOs against Aster, AMI, Greencycle, and Globest. 13 Commissioner Karpel would issue CDOs directed to defaulting respondents AMI, Globest, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse, and LD Products. For the reasons noted in Certain Powered Cover Plates, Inv. No. 337-TA- 1124, Comm’n Op. at 22-23 n.20 (June 11, 2020) and in Certain Pocket Lighters, Inv. No. 337- TA-1142, Comm’n Op. at 19-20 n.15 (July 13, 2020), Commissioner Karpel does not consider the Commission’s determination to issue a GEO under section 337(d)(2) to direct that the requested CDOs with respect to defaulting respondents Xiaohui, Ecoolmart, Intercon, Do it Wiser, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, and Super Warehouse be considered under section 337(f)(1). Rather, she considers section 337(g)(1) is the appropriate authority for the issuance of CDOs as to these defaulting respondents because the criteria for issuance of CDOs under subsection 337(g)(1)(A)- (E) are met as to these respondents. Each of these respondents was named in the complaint and each was served or refused service of the complaint and notice of investigation. See Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020) (finding Xiaohui in default for failing to respond to the complaint and notice of investigation); Order No. 26 (Dec. 20, 2019), (finding Ecoolmart and Intercon in default for failing to respond to the complaint and notice of investigation), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019) (finding Do It Wiser and Solong in default for failing to respond to the complaint and notice of investigation), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019) (finding Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, and Super Warehouse in default for failing to respond to the complaint and notice of investigation), unreviewed by Comm’n Notice (Jan. 16, 2020). The ALJ issued show cause orders ordering these respondents to show cause why they should not be held in default for failing to respond to the complaint and notice of investigation. See id. None of these respondents filed responses to the show cause orders. Id. These findings satisfy subsections 337(g)(1)(A)-(D). Brother requested CDOs limited to each of these defaulting respondents thus
23 C. Aster’s Newly Designed Products 1. Aster’s Submission Aster argues that its newly designed products should be excluded from any remedial orders that issue. According to Aster, it timely disclosed its newly designed products to Brother on November 22, 2019, during the discovery phase of the investigation. Id. at 2. Aster states that it and Brother then entered into an agreement on January 31, 2020 (“Agreement”), “agreeing and stipulating that Aster’s Newly Designed Products produced to Brother on November 22, 2019, ‘… will not be covered by any remedial order that issues in this Investigation directed to toner cartridges and components thereof that infringe [the Asserted Claims of the Asserted satisfying subsection 337(g)(1)(E). Given that subsections 337(g)(1)(A)-(E) are satisfied and Brother requested CDOs directed to these respondents, the statute directs the Commission to issue the requested CDOs, subject to consideration of the public interest. The public interest factors as detailed in Section II.D infra do not support a finding that CDOs directed to these defaulting respondents in this investigation would be contrary to the public interest. Accordingly, Commissioner Karpel would issue CDOs against Xiaohui, Ecoolmart, Intercon, Do it Wiser, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, and Super Warehouse under section 337(g)(1). Commissioner Karpel agrees that Section 337(f) applies with respect to Brother’s request for CDOs as to respondents Aster, Ami, Globest, Greencycle, 18, and LD Products. Respondents Aster, AMI, Globest, and Greencycle filed answers to the complaint. See EDIS Doc ID 691633 (Aster answer); EDIS Doc. ID 690711 (AMI answer); EDIS Doc. ID 690720 (Globest answer); EDIS Doc. ID 691808 (Greencycle answer). Respondent I8 entered an appearance through counsel, requested additional time to file an answer to the complaint, and thereafter failed to participate in the investigation after its counsel withdrew from representation. See EDIS Doc IDs 690960, 6922223. Respondent LD Products was found in default based on filing a notice of default pursuant to Commission Rule 210.16(b)(3), and thus the ALJ did not issue a show cause order. For these reasons, the criteria for section 337(g)(1) are not met as to these respondents and that section 337(f)(1) is the appropriate authority with respect to CDOs for these respondents. Commissioner Karpel concurs that respondents Aster, Ami, Globest, Greencycle, 18, and LD Products have sufficient inventories or business operations in the United States to support the issuance of CDOs directed to these respondents, subject to consideration of the public interest. The public interest factors as detailed in Section II.D infra do not support a finding that CDOs directed to these respondents in this investigation would be contrary to the public interest. .
24 Patents].’” Id. (citing Agreement at ¶¶ 1.12-1.19 (emphasis added by Aster)). Subsequently, Brother and Aster filed a Joint Stipulation on March 4, 2020, attaching the Agreement and summarizing its terms. See Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation (March 4, 2020) (“Joint Stipulation”). In the Joint Stipulation, Aster agreed that it “would ‘… not argue or otherwise dispute’ that any of the Original Design Products [Aster’s accused products] … should be excluded from the scope of any remedy …” Aster Sub. at 2 (citing Joint Stip. at ¶ 13; Agreement at ¶ 1.4). Accordingly, while Order No. 40, which grants Brother’s motion for summary determination of violation “makes infringement findings against Aster’s Original Design Products and recommends that they be subject to a CDO, a GEO, or in the alternative, an LEO,” it “does not mention Aster’s Newly Designed Products or recommend that Aster’s Newly Designed Products be included within the scope of the ALJ’s recommended LEO, GEO, or CDO remedies.” Id. at 3-4. Aster contends that pursuant to its Agreement with Brother, the Commission’s remedial orders should include an express carve out for Aster’s newly designed products. Id. at 6. Aster anticipates that “Brother will suggest that the parties agreed that only Aster (and Aster-related entities) and Aster’s customers are permitted to import Aster’s Newly Designed Products into the United States” and argues that “[s]uch an assertion has no merit because the plain language of the Agreement clearly says that Aster’s Newly Designed Products will not be covered by any remedial order that may issue.” Id. at 9 (citing Agreement at ¶¶ 1.14-1.19). Aster points to the Agreement’s provision that: 1.14. The Parties agree that toner cartridges that are compatible with Brother’s TN-221BK, TN-221C, TN-221M, TN-221Y, TN-225C, TN-225M, or TN-225Y toner cartridges and have the specific configurations shown in Figures 1-5 in Table 7 below (including those with Aster-, Arcon-, Aztech-, CMYBabee-, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands) will not be covered by any remedial order that issues in this Investigation directed to toner cartridges
25 and components thereof that infringe one or more of Claims 1-5, 10, and 12-15 of the ’093 Patent; Claims 1, 3, 5, 7-12, and 18 of the ’387 Patent; or Claims 1, 7-11, 15, and 16 of the ’460 Patent. Agreement at ¶¶ 1.14-1.19 (emphasis added by Aster). Aster asserts that “[t]he clear language of the Agreement establishes that it is Aster’s Newly Designed Products that the parties agreed should not be covered by any remedial order that issues” and that “[t]he parties did not agree that only certain people/entities could import Aster’s Newly Designed Products.” Id. at 9-10. 2. Brother’s Response Brother states that “[a]n express carve-out is inappropriate for Aster’s Newly Designed Products because, as Aster acknowledges, those products were not adjudicated in this Investigation.” Brother Rep. at 2-3. Brother argues that the Commission should not depart from its long-standing practice not to include express carve-outs in remedial orders for non- adjudicated products. Id. (citing See Certain Optical Disk Controller Chips & Chipsets & Products Containing Same, Including DVD Players & PC Optical Storage Devices, Inv. No. 337-TA-506, Comm’n Op. at 56 (Sept. 28, 2005) (finding “no basis for specifically exempting [the MT1888] chip from the limited exclusion order” because “[t]he Commission’s long- standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found” and “neither the ALJ nor the Commission found that the MT1888 chip does not infringe or, in fact, made any infringement determination as to the MT1888 chip”); Certain Magnetic Tape Cartridges & Components Thereof, Inv. No. 337-TA- 1058 (“Magnetic Tape”), Comm’n Op. at 58 (Mar. 25, 2019) (concurring with “the ALJ’s recommendation against including an express carve out” for certain products because it was “clear from the record that these products … were not adjudicated as part of this investigation”)). Brother also argues that an express carve-out for these products would be redundant and unnecessary. Id. at 4-5. According to Brother, “the general exception for imports made ‘with
26 the permission[] of the patentee’ in GEOs, the general exception for ‘if … the owner of the Asserted Patents … authorizes’ in CDOs, and Brother’s and Aster’s agreement regarding the Newly Designed Products (i.e., the Agreement) already allow Aster to import and sell its Newly Designed Products in the United States.” Id. Brother states that “[t]he Agreement expressly states that the Newly Designed Products, including those with each of the brand names identified through discovery with which Aster admitted affiliation, “will not be covered by any remedial order that issues in this Investigation.” Id. at 4 (citing See Agreement at ¶¶ 1.14-1.19 (Jan. 31, 2020)). As Brother explains, “Aster has Brother’s permission to import and sell the Newly Designed Products in the United States.” Id. Brother asserts that “Aster improperly attempts to expand the scope of the Agreement so it may inure the benefits of the Agreement to any number of unknown and unidentified entities.” Brother Rep. at 8. Brother finds it “particularly troubling in light of Aster’s request that it and these unnamed entities also be permitted to import products without first proving to CBP that their products are covered by the Agreement” and that “[s]uch a loophole would make it unnecessarily challenging for CBP to effectively enforce the GEO.” Id. Brother states that “[t]he Agreement is only between Brother and Aster” (Agreement at 1) and “clearly states that it ‘may not be assigned, licensed, or delegated without the express written consent of the Parties.’” Id. (citing Agreement at ¶ 5.7). Brother emphasizes that it “has not and does not consent to entities other than Aster entities importing the Newly Designed Products.” Id. 3. OUII Response OUII agrees that “Aster’s Newly Designed Products should not be covered by any remedial order that issues in this investigation and that there should not be any finding of infringement as to those products.” OUII Rep. at 2. OUII, however, argues that an express carve out is not warranted because the “Commission has generally included express carve outs in
27 exclusion orders only for products that were found to be non-infringing,” but that here, the newly designed products were not found to be non-infringing. Id. at 4 (citing Certain Powered Cover Plates, Inv. No. 337-TA-1124, Comm’n Op. at 19-20 (July 10, 2020) (EDIS Doc. ID 714335) (excluding redesigns found to be non-infringing from the scope of the GEO)). In OUII’s view, the language proposed in the “GEO is sufficient to cover the newly designed products set forth in the Aster Joint Stipulation and Agreement, and that by agreeing that Aster’s . . . newly designed toner cartridges are outside the scope of any remedial order, Brother has provided permission to allow their importation.” Id. Thus, “[a]ny additional express carve out would simply be redundant and unnecessary.” Id. OUII also argues that the “Aster Joint Stipulation and Agreement do not contain . . . limiting language” included in agreements with other respondents. Id. As an example, OUII points to the agreement between Brother and AMI, which states that: AMI Stipulation at ¶ 22.14 Thus, OUII states that “the Aster Joint Stipulation and Agreement do not restrict permissible importation of Aster’s Newly Designed Products to any particular entity.” Id. at 7. 14 We note that Brother entered into joint agreements with AMI, Cartridge Evolution, E-Z Ink, Globest, and Linkyo, stipulating that it would not accuse their Newly Designed Products of infringement in this investigation. ID at 34; Brother and AMI Joint Stipulation as to Original and Newly Designed Products at ¶¶ 12-20 (Feb. 3, 2020); Brother and Cartridge Evolution Joint Stipulation as to Original and Newly Designed Products at ¶¶ 13-21 (Feb. 3, 2020); Brother and E-Z Ink Joint Stipulation as to Original and New Designed Products at ¶¶ 13-21 (Feb. 3, 2020);
28 4. Analysis The Commission finds that the Joint Stipulation and Agreement between Brother and Aster with respect to specifically identified newly designed products is pertinent to the enforcement of the remedial orders here.15 The Agreement expressly identifies these products in paragraphs 1.14 through 1.19 and states that these enumerated toner cartridges “will not be covered by any remedial order that issues in this Investigation directed to toner cartridges and components thereof that infringe” asserted claims of the patents at issue. See Agreement ¶¶ 1.14 – 1.19. Brother states that, through the Agreement, it has assented to the importation and sale of the specifically enumerated toner cartridge models. See Brother Rep. at 4 (“In other words, Aster has Brother’s permission to import and sell the Newly Designed Products in the United States.”). It is unnecessary here to include an express exemption for these products in the remedial orders, however, as these products are already the subject of the Joint Stipulation and Agreement between the parties. The Commission further finds that the Joint Stipulation and Agreement do not restrict permissible importation of the identified Newly Designed Products to any particular entity. As OUII notes, “In general, the Aster Joint Stipulation and Agreement both state, inter alia, that Brother and Aster agree that Aster’s Newly Designed Products will not be covered by any remedial order that issues in this investigation.” OUII Rep. at 6 (citing Aster Joint Stipulation at Brother and Globest Joint Stipulation as to Original and Newly Designed Products at ¶¶ 13-21 (Feb. 7, 2020); Brother and Linkyo Joint Stipulation as to Original and Newly Designed Products at ¶¶ 12-26 (Feb. 7, 2020). 15 Aster’s Newly Designed Products are identified in the Agreement and Joint Stipulation by product numbers: AN-B0221, AN-B0223, AN-B0225, AN-B0227, AS-B0420, AS-B0450, AS- B0630, AS-B0660, AN-B0730, AN-B0760, and AN-B0770 and Bates numbers Aster PX-1, Aster PX-2, Aster PX-3, Aster PX-4, Aster PX-5, Aster PX-6, Aster PX-7, Aster PX-8, Aster PX-9, Aster PX-10, and Aster PX-11 respectively (for the physical samples produced to Brother). Agreement at ¶¶ 1.14 – 1.19; Joint Stip. at ¶ 6. These Newly Designed Products are also depicted in photographs within the Agreement. See Tables 7–12 of the Agreement.
29 ¶ 11; Aster Agreement at ¶¶ 1.12-1.19; Aster Br. at 9). For instance, exemplary paragraph 1.14 to the Agreement states: Agreement at ¶ 1.14. As is evident from the language of paragraphs 1.14 through 1.19, the products that the parties agree “will not be covered by any remedial order that issues in this Investigation” are identified in terms of (1) compatibility with Brother’s identified toner cartridges; (2) conformity with identified configurations specified in the referenced Tables of the Agreement; and (3) include branded toner cartridges “with Aster-, Arcon-, Aztech-, CMYBabee- , Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.” Id. No language in these paragraphs limit the entities that would be authorized to import these products. There is no such limiting language elsewhere in the Joint Stipulation or Agreement. Brother argues that the Agreement does not allow “[a]ny entity … to import Aster’s Newly Designed Products.” Brother Rep. at 11. We find this argument unpersuasive because Brother has not shown that the language of the Joint Stipulation and Agreement restricts importation of the identified newly designed products to any specific entities. The Commission finds that nothing in the Agreement or Joint Stipulation is so limiting. The Agreement and Joint Stipulation are directed to products not covered by the remedial orders, not the identity of the importer. Thus, the Commission declines to read such a restriction into the parties’ Agreement.
30 D. The Public Interest Prior to issuing remedial orders under section 337, the Commission must weigh the effect the orders would have on four public interest factors: (1) the public health and welfare; (2) competitive conditions in the United States economy; (3) the production of like or directly competitive articles in the United States; and (4) United States consumers. 19 U.S.C. §§ 1337(d), (f). “[T]he statute does not require the Commission to determine that a remedial order would advance the public interest factors but rather requires the Commission to consider whether issuance of such an order will adversely affect the public interest factors.” Certain Loom Kits for Creating Linked Articles, Inv. No. 337-TA-923, Comm’n Op. at 15 (June 26, 2015) (“Loom Kits”) (internal citation omitted). The Commission finds that entry of the recommended GEO and CDOs would not be contrary to the public interest. 1. Public Health and Welfare The remedial orders do not raise any public health or welfare concerns. As observed by the Federal Circuit, remedial orders have been denied based on overriding public interest concerns in only a handful of investigations, where having “inadequate supply within the United States—by both the patentee and domestic licensees—meant that an exclusion order would deprive the public of products necessary for some important health or welfare need: energy efficient automobiles, basic scientific research, or hospital equipment.” Spansion, Inc. v. U.S. Int’l Trade Comm’n, 629 F.3d 1331, 1360 (Fed. Cir. 2010); see, e.g., Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-946, Comm’n Op. at 4-13 (June 29, 2016) (“Ink Cartridges”); Toner Cartridges, Comm’n Op. at 4-11; Certain Toner Cartridges and Components Thereof, Inv. No. 337-TA-740, Comm’n Op. at 4-8 (Oct. 5, 2011). The toner cartridges at issue in this investigation do not implicate public health or welfare concerns.
31 2. Competitive Conditions in the United States Economy There appears to be a large number of other manufacturers of toner cartridges, including HP, Epson, Samsung, Canon, Panasonic, Dell, Xerox, Lexmark, Ricoh, and PrintRite can adequately supply the domestic market. See, e.g., https://www.reportsanddata.com/report- detail/printer-ink-cartridges-market (accessed Sept. 18, 2020); see also Ink Cartridges, Comm’n Op. at 16 (finding that there are numerous competitors in the market for ink cartridges that will not be affected by remedial orders); Toner Cartridges, Comm’n Op. at 14 (finding that there are many other companies in the toner cartridge market such as Dell, Epson, Lexmark, Ricoh, Samsung, and Xerox that sell toner cartridges and would be able to meet domestic demand). Thus, remedial orders will not cause adverse competitive conditions in the US economy. 3. The Production of Like or Directly Competitive Articles in the United States As OUII notes, “the accused products are manufactured abroad, whereas Brother remanufactures used toner cartridges in the U.S.” OUII Sub. at 17 (citing ID at 104). The fact that the articles covered by the remedial orders are made outside of the United States means that the orders will not affect the production of like or directly competitive articles in the United States. 4. United States Consumers Brother asserts that it “manufactures products that can replace all of the infringing articles that would be subject to exclusion” and that “[s]ince 2010, Brother has sold millions of toner cartridges in the United States that practice the Asserted Patents, and that are competitive with, and indeed are direct replacements for, the infringing articles.” Brother Sub. at 21-22. Brother notes that “Aster and the Defaulting Respondents all market their infringing toner cartridges as direct alternatives to Brother’s toner cartridges.” Id. at 22. Brother further asserts
32 that it “can manufacture and distribute products in quantities sufficient to meet demand if the infringing articles are subject to exclusion, using its existing distribution networks.” Id. Brother adds that, in addition, “[t]here also are numerous other well-known companies that sell similar types of laser print systems and toner cartridges that compete with Brother laser printing systems, such as Canon, Hewlett Packard, and Dell” and that “[n]one of these companies would be impacted by the requested remedial orders, and their products are another alternative to Brothers systems.” Id. In sum, Brother and other toner manufacturers can adequately supply the U.S. market and so an exclusion order will not harm U.S. consumers of toner cartridges. Accordingly, the Commission finds that the remedial orders will not be adverse to United States consumers. E. Bond When the Commission enters an exclusion order and/or CDO, a respondent may continue to import and sell its products during the 60-day period of Presidential review subject to posting a bond. 19 U.S.C. § 1337(j)(3). The amount of the bond is specified by the Commission and must be sufficient to protect a complainant from any injury. Id.; 19 C.F.R. § 210.50(a)(3). “The Commission typically sets the bond based on the price differential between the imported infringing product and the domestic industry article or based on a reasonable royalty. However, where the available pricing or royalty information is inadequate, the bond may be set at one hundred (100) percent of the entered value of the infringing product.” Loom Kits, Comm’n Op. at 17-19 (internal citations omitted). The Commission has set a 100 percent bond in cases where respondents have defaulted and provided no discovery regarding pricing, precluding any reliable determination of an appropriate bond amount. See id. at 19. As the RD noted, “In appropriate circumstances, the Commission sets different bond rates for different respondents.” RD at 147 (citing e.g., Certain Foam Footwear, Inv. No. 337-
33 TA-567, Comm’n Op. at 9 (Aug. 2, 2011); Certain Coaxial Cable Connectors & Components Thereof & Prod. Containing Same, 337-TA-650, Comm’n Notice at 2 (Sept. 13, 2011)). The RD further noted that “[t]he Commission may also set different bond rates for different products of the same respondent.” Id. (citing Certain Magnetic Data Storage & Tape Cartridges Containing the Same (II), Inv. No. 337-TA-1076, Comm’n Op. at 67 (June 20, 2019). The RD observed that “Brother, AMI, Aster, and Globest stipulated to different bond rates for different Accused Products, as shown below, based on the calculated price differentials for those products.” Id. (citing AMI Import. Stip., Ex. A; Aster Import. Stip., Ex. A; Globest Import. Stip., Ex. A.) Infringing Products AMI Aster Globest Accused 221/225 Products 568% 1463% 900% Accused 223/227 Products 274% 336% 372% Accused 420/450 Products - 623% 682% Accused 630/660 Products 575% 886% 635% Accused 730/760/770 Products 589% 354% 369% The RD stated that “[a]s these bond rates were calculated using reliable data and the parties agreed to the percentages, I recommend entry of bond at the above-referenced bond rates.” Id. at 147-48. The RD recommended a bond rate of 100% of the entered value of infringing toner cartridges and components thereof for the remaining defaulting respondents. Id. at 148. OUII “agrees with the ALJ’s recommendation in view of the parties’ stipulated bond calculations.” OUII Sub. at 20. For the remaining respondents, OUII agrees with the ALJ that the Commission set a bond in the amount of 100 percent of the entered value of infringing
34 products imported inasmuch as Brother was not able to obtain adequate discovery from these defaulting respondents. The Commission agrees with the ALJ’s recommendation and has determined to set the bond in the amounts prescribed in the table above and at one hundred (100%) percent of the entered value of infringing toner cartridges and components thereof for the remaining defaulting respondents. III. CONCLUSION For the reasons detailed above, the Commission has determined to (1) issue a GEO prohibiting the unlicensed importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 Patent; claims 1, 7-11, 15, and 16 of the ’460 Patent; claims 1-7, and 9 of the ’856 Patent; claims 1, 4, 5, and 9 of the ’456 Patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 Patent; (2) issue cease and desist orders directed to Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui; (3) find that the public interest does not preclude the issuance of the remedial orders; and (4) set the bond during the period of Presidential review in the amount of the following percentages of the entered value for respondents AMI, Aster, and Globest: Infringing Products AMI Aster Globest Accused 221/225 Products 568% 1463% 900% Accused 223/227 Products 274% 336% 372% Accused 420/450 Products - 623% 682% Accused 630/660 Products 575% 886% 635% Accused 730/760/770 Products 589% 354% 369%
35 The Commission determines to set the bond in the amount of one hundred (100%) percent of the entered value for all other infringing articles. By order of the Commission. Lisa R. Barton Secretary to the Commission Issued: December 17, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached COMMISSION OPINION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on December 17, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondents AMI Brothers, Inc. and Globest Trading Inc.: Gary M. Hnath, Esq. MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Email: ghnath@mayerbrown.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent LD Products, Inc. Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 2 McGUIREWOODS LLP 2001 K Street, NW, Suite 400 Washington, DC 20006 Email: seadkins@mcguirewoods.com ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download Respondents: An An Beauty Limited Flat/Room 2104 21/F, Mongkok Commericial Centre 16 Argyle Street, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Aztech Enterprises Limited Units 1206, 12/F, Hheuk Nang Center 9 Hillwood Road Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Billiontree Technology USA Inc. 19945 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Carlos Imaging Supplies, Inc. PMB 540 17128 Colima Road Hacienda Heights, CA 91745 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Do It Wiser, LLC 2422 Old Capital Trail Suite 747 Wilmington, DE 19808 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Eco Imaging Inc. PMB A839 14252 culver Drive Irvine, AC 92604 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 3 Completed by Complainants Ecoolmart Co. PMB 322 17360 Colima Road Rowland Heights, CA 91748 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Greencycle Tech, Inc. 9638 Rush Street, Unit E South El Monte, CA 91733 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Hongkong Boze Co., Ltd. Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants I8 International, Inc. 19961 Harrison Avenue City of Industry, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Ikong E-Commerce PMB 429, 385 South Lemon Avenue Suite E Walnut, CA 91789 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Intercon International Corp. PMB 109, 407 West Imperial Highway Suite H Brea, CA 92821 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants IPrint Enterprise Limited Rooms 1318-19, 13/F Hollywood Plaza 610 Nathan Road, Mongkok, Kowloon, Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 Certificate of Service – Page 4 ☒ Other: Service to Be Completed by Complainants Mangoket LLC 1641 West Main Street Suite 222 Alhambra, CA 91801 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Solong E-Commerce Co., LLC Flat/Room 19C, Lockhart Center, 301-307 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Smartjet E-Commerce Co., LLC Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai Hong Kong 999077 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Super Warehouse Inc. 1160 Yew Avenue DSS-5179 Blaine, WA 98230 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants Zhuhai Xiaohui E-Commerce., Ltd. Room 502, Factory five, No. 12, Pingdong 3rd Road Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000 ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Service to Be Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Investigation No. 337-TA-1174 NOTICE OF A COMMISSION DETERMINATION NOT TO REVIEW AN INITIAL DETERMINATION GRANTING COMPLAINANTS’ MOTION FOR SUMMARY DETERMINATION OF A VIOLATION OF SECTION 337; SCHEDULE FOR FILING WRITTEN SUBMISSIONS ON REMEDY, THE PUBLIC INTEREST, AND BONDING AGENCY: U.S. International Trade Commission. ACTION: Notice. SUMMARY: Notice is hereby given that, on July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (“ID”) (Order No. 40) in the above-captioned investigation, granting summary determination on violation of section 337 and including a recommended determination (“RD”) on remedy and bonding. The Commission has determined not to review the ID. The Commission requests briefing from the parties, interested government agencies, and interested persons on the issues of remedy, the public interest, and bonding. FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, telephone (202) 205-3179. 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 EDIS3Help@usitc.gov. General information concerning the Commission may also be obtained by accessing its 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 September 17, 2019, the Commission instituted this investigation based on a complaint filed by Brother Industries, Ltd. of Nagoya Japan; Brother International Corp. (U.S.A.) of Bridgewater, New Jersey; and Brother Industries (U.S.A.), Inc. of Bartlett, Tennessee (collectively, “Brother”). 84 FR 49762-63 (Sept. 23, 2019). The complaint alleged violations of section 337 based on the importation into the United States, the sale for importation, or the sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same by reason of infringement of certain claims of U.S. Patent Nos. 9,568,856; 9,575,460; 9,632,456; 9,785,093; and 9,846,387 (collectively, “the Asserted Patents”). Id. The Commission’s notice of investigation named the
2 following 32 respondents: AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty Limited of Kowloon, Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside, California (“Aster”); Aztech Enterprises Limited of Kowloon, Hong Kong (“Aztech”); Billiontree Technology USA Inc. of City of Industry, California (“Billiontree”); Carlos Imaging Supplies, Inc. of Hacienda Heights, California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”); Eco Imaging Inc. of Irvine, California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights, California (“Ecoolsmart”); EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Greencycle Tech, Inc. of South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd. of Kowloon, Hong Kong (“Hongkong Boze”); I8 International, Inc. of City of Industry, California (“I8”); IFree E-Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E- Commerce of Walnut, California (“Ikong”); Intercon International Corp. of Brea, California (“Intercon”); IPrint Enterprise Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of Long Beach, California (“LD Products”); Linkyo Corp. of La Puente, California (“Linkyo”); Mangoket LLC of Alhambra, California (“Mangoket”); New Era Image LLC of Corona, California (“New Era”); OW Supplies Corp. of Corona, California (“OW Supplies”); Solong E- Commerce Co., LLC of Wan Chai, Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of Wan Chai, Hong Kong (“Smartjet”); Super Warehouse Inc. of Blaine, Washington (“Super Warehouse”); Theresa Meng of Brooklyn, New York (“Ms. Meng”); Triple Best LLC of San Diego, California (“Triple Best”); V4ink, Inc. of Diamond Bar, California (“V4ink”); and Zhuhai Xiaohui E-Commerce Co., Ltd. of Zhuhai, China (“Xiaohui”). Id. at 49762-63. The notice of investigation also names the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 49763. Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however, decided not to oppose the summary determination motion of violation as to the accused products, even though Aster’s products are subject to the motion. See Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation (Mar. 4, 2020). EPS and IFree were terminated from the investigation based upon withdrawal of the complaint against them. See Order No. 32 (Jan. 28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020). Cartridge Evolution, E-Z Ink, Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and V4ink were terminated from the investigation based upon entry of consent orders. See Order No. 36 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No 38 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 37 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 10 (Oct. 18, 2019), unreviewed by Comm’n Notice (Nov. 6, 2019); Order No. 17 (Nov. 21, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 28 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020); Order No. 18 (Nov. 27, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 33 (Fe. 3, 2020), unreviewed by Comm’n Notice (Mar. 4, 2020). The following 21 respondents defaulted: AMI, Globest, An An Beauty, Aztech, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse, and LD Products (collectively, “Defaulting Respondents”). See Order No. 35 (Mar. 5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by
3 Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019). On March 12, 2020, Brother filed a motion for summary determination of violation of section 337 by Aster and the Defaulting Respondents and for a recommendation that the Commission issue a general exclusion order and cease and desist orders. See Complainants’ Motion for Summary Determination of Violation and for Recommended Determination on Remedy and Bonding. On March 23, 2020, OUII filled a response in support of Brother’s motion. See Commission Investigative Staff’s Response to Brother’s Motion for Summary Determination of Violation. No respondent filed a response to Brother’s motion. Id. On July 23, 2020, the ALJ issued the subject ID granting summary determination of violation of section 337 by Aster and Defaulting Respondents. The ID finds that the Commission has subject matter jurisdiction over the investigation. ID at 34. The ID further finds that none of the respondents contest the Commission’s personal jurisdiction over them or in rem jurisdiction as to the accused products. ID at 34-35. The ID finds that Brother: (1) established the importation requirement as to Aster and Defaulting Respondents, ID at 36-79; (2) demonstrated that the accused products infringe the asserted claims, id. at 118-133; and (3) demonstrated that the domestic industry (“DI”) products practice at least one claim of each Asserted Patent and that a DI exists in the United States, id. at 84-118. The RD recommends issuance of a general exclusion order (“GEO”) (or, in the alternative, a limited exclusion order directed to Aster and each of the Defaulting Respondents). Id. at 134-44. The RD further recommends issuance of cease and desist orders (“CDOs”) directed to Aster and each defaulting respondent that has domestic operations. Id. at 144-46. The RD also recommends setting different bond rates for entry of the different products covered by the GEO during the period of Presidential review. Id. at 146-48 (recommended bond rate table at 147). No one petitioned for review of the ID. The Commission has determined not to review the ID. On August 24, 2020, Aster filed a public interest statement in response to the Commission’s notice soliciting public interest comments pursuant to 19 CFR 210.50(a)(4)(i). In its submission, Aster argued that any Commission remedial orders issued in this investigation should not cover its new products pursuant to its stipulation with Brother. See Respondent Aster Graphics, Inc.’s Statement of Public Interest. On August 26, 2020, Brother filed a response. See Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond. The Commission has determined to reject Aster’s submission as improper under 19 CFR 210.50(a)(4)(i). 19 CFR 210.50(a)(4)(i) provides that parties may file information with the Commission relating to the public interest. Aster’s submission, however, concerns the scope of the remedy and therefore does not fall within the ambit of the public interest submissions provided for under 19 CFR 210.50(a)(4)(i). Brother’s response is thereby moot. The Commission notes that Aster will have an opportunity to raise its arguments regarding the scope of any remedial orders in a remedy submission before the Commission in response to the instant notice, which invites parties to file submissions addressing remedy, bonding and the public interest as noted below.
4 In connection with the final disposition of this investigation, the statute authorizes issuance of: (1) an exclusion order that could result in the exclusion of the subject articles from entry into the United States, and/or (2) one or more cease and desist orders that could result in Aster and the Defaulting Respondents being required to cease and desist from engaging in unfair acts in the importation and sale of such articles. Accordingly, the Commission is interested in receiving written submissions that address the form of remedy, if any, that should be ordered. If a party seeks exclusion of an article from entry into the United States for purposes other than entry for consumption, the party should so indicate and provide information establishing that activities involving other types of entry either are adversely affecting it or likely to do so. For background, see Certain Devices for Connecting Computers via Telephone Lines, Inv. No. 337- TA-360, USITC Pub. No. 2843, Comm’n Op. at 7-10 (December 1994). The statute requires the Commission to consider the effects of any remedy upon the public interest. The public interest factors the Commission will consider include the effect that an exclusion order and/or CDO would have on: (1) the public health and welfare; (2) competitive conditions in the U.S. economy; (3) U.S. production of articles that are like or directly competitive with those that are subject to investigation; and (4) U.S. consumers. The Commission is therefore interested in receiving written submissions that address the aforementioned public interest factors in the context of this investigation. If the Commission orders some form of remedy, the U.S. Trade Representative, as delegated by the President, has 60 days to approve, disapprove, or take no action on the Commission’s determination. See Presidential Memorandum of July 21, 2005. 70 Fed. Reg. 43251 (July 26, 2005). During this period, the subject articles would be entitled to enter the United States under bond, in an amount determined by the Commission and prescribed by the Secretary of the Treasury. The Commission is therefore interested in receiving submissions concerning the amount of the bond that should be imposed if a remedy is ordered. WRITTEN SUBMISSIONS: Parties to this investigation, interested government agencies, and any other interested parties are invited to file written submissions on the issues of remedy, the public interest, and bonding. Such submissions should include views on the recommended determination by the ALJ on remedy and bonding. In their initial written submissions, Brother is also requested to identify the remedy sought and Brother and OUII are also requested to submit proposed remedial orders for the Commission’s consideration. Brother is further requested to identify the dates the Asserted Patents expire, to provide the HTSUS subheadings under which the subject articles are imported, and to supply identification information for all known importers of the subject articles. Initial written submissions, including proposed remedial orders, must be filed no later than close of business on September 22, 2020. Reply submissions must be filed no later than the close of business on September 29, 2020. No further submissions on any of these issues will be permitted unless otherwise ordered by the Commission. Persons filing written submissions must file the original document electronically on or before the deadlines stated above. The Commission’s paper filing requirements in 19 CFR 210.4(f) are currently waived. 85 FR 15798 (Mar. 19, 2020). Submissions should refer to the
5 investigation number (Inv. No. 337-TA-1174) in a prominent place on the cover page and/or the first page. (See Handbook for Electronic Filing Procedures, https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions regarding filing should contact the Secretary (202-205-2000). Any person desiring to submit a document to the Commission in confidence must request confidential treatment. All such requests should be directed to the Secretary to the Commission and must include a full statement of the reasons why the Commission should grant such treatment. See 19 CFR 201.6. Documents for which confidential treatment by the Commission is properly sought will be treated accordingly. A redacted non-confidential version of the document must also be filed simultaneously with any confidential filing. All information, including confidential business information and documents for which confidential treatment is properly sought, submitted to the Commission for purposes of this Investigation may be disclosed to and used: (i) by the Commission, its employees and Offices, and contract personnel (a) for developing or maintaining the records of this or a related proceeding, or (b) in internal investigations, audits, reviews, and evaluations relating to the programs, personnel, and operations of the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. government employees and contract personnel, solely for cybersecurity purposes. All contract personnel will sign appropriate nondisclosure agreements. All non-confidential written submissions will be available for public inspection at the Office of the Secretary and on EDIS. The Commission vote for these determinations took place on September 8, 2020. 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. Lisa R. Barton Secretary to the Commission Issued: September 8, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on September 8, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME INV. NO. 337-TA-1174 ORDER NO. 40: INITIAL DETERMINATION GRANTING COMPLAINANTS’ MOTION FOR SUMMARY DETERMINATION OF VIOLATION, RECOMMENDED DETERMINATION ON REMEDY AND BONDING (July 23, 2020) PUBLIC VERSION
1 Table of Contents I. Introduction ......................................................................................................................... 5 A. Procedural History ........................................................................................................... 5 B. The Parties ..................................................................................................................... 10 1. Complainants .............................................................................................................. 10 2. Respondents ................................................................................................................ 11 C. The Technology at Issue ................................................................................................ 18 D. The Asserted Patents ...................................................................................................... 19 E. The Domestic Industry Products .................................................................................... 21 F. The Accused Products.................................................................................................... 22 1. Accused Group 1 Products ......................................................................................... 24 2. Accused Group 2 Products ......................................................................................... 26 3. Accused Group 3 Products ......................................................................................... 29 4. Representative Products ............................................................................................. 30 5. Newly Designed Products .......................................................................................... 34 II. Jurisdiction & Importation ................................................................................................ 34 A. Subject Matter Jurisdiction ............................................................................................ 34 B. Personal Jurisdiction ...................................................................................................... 35 C. In Rem Jurisdiction ........................................................................................................ 35 D. Importation..................................................................................................................... 36 AMI ............................................................................................................................ 36 An An Beauty ............................................................................................................. 37 Aster............................................................................................................................ 39 Aztech ......................................................................................................................... 40 Billiontree ................................................................................................................... 41 Carlos Imaging ........................................................................................................... 44 Do It Wiser ................................................................................................................. 46 Eco Imaging ................................................................................................................ 47 Ecoolmart.................................................................................................................... 50 Globest ........................................................................................................................ 51 Greencycle .................................................................................................................. 52 Hongkong Boze .......................................................................................................... 54 I8 ................................................................................................................................. 56 Ikong ........................................................................................................................... 59 PUBLIC VERSION
2 Intercon ....................................................................................................................... 61 IPrint ........................................................................................................................... 62 LD Products ................................................................................................................ 64 Mangoket .................................................................................................................... 69 Solong ......................................................................................................................... 71 Smartjet ....................................................................................................................... 73 Super Warehouse ........................................................................................................ 76 Xiaohui ....................................................................................................................... 79 E. Standing ......................................................................................................................... 81 III. Legal Principles ................................................................................................................ 82 A. Domestic Industry .......................................................................................................... 82 1. Economic Prong ......................................................................................................... 82 2. Technical Prong .......................................................................................................... 83 B. Patent Infringement ........................................................................................................ 83 IV. Domestic Industry ............................................................................................................. 84 A. Technical Prong ............................................................................................................. 84 1. ’093 patent .................................................................................................................. 86 2. ’460 patent .................................................................................................................. 90 3. ’856 patent .................................................................................................................. 92 4. ’456 patent .................................................................................................................. 96 5. ’387 patent ................................................................................................................ 100 B. Economic Prong ........................................................................................................... 104 1. Relevant Domestic Industry Activities ..................................................................... 104 2. Allocation Methods .................................................................................................. 109 3. Plant and Equipment ................................................................................................. 112 4. Labor and Capital ..................................................................................................... 113 5. Brother’s Domestic Industry Investments Are Significant and Substantial ............. 116 V. Infringement .................................................................................................................... 118 A. Representative Products ............................................................................................... 118 B. Asserted Group 1 Patents ............................................................................................. 123 1. ’093 patent ................................................................................................................ 123 2. ’460 patent ................................................................................................................ 125 C. Asserted Group 2 Patents ............................................................................................. 126 1. ’856 patent ................................................................................................................ 127 PUBLIC VERSION
3 2. ’456 patent ................................................................................................................ 129 D. Asserted Group 3 Patent .............................................................................................. 131 VI. Conclusions of Law ........................................................................................................ 133 VII. Recommended Determination on Remedy & Bond ....................................................... 134 A. General Exclusion Order.............................................................................................. 135 1. Circumvention of Limited Exclusion Orders ........................................................... 136 2. Pattern of Violation of Section 337 .......................................................................... 140 B. Limited Exclusion Orders ............................................................................................ 144 C. Cease and Desist Order ................................................................................................ 144 D. Bond During Presidential Review ............................................................................... 146 VIII. Initial Determination ....................................................................................................... 148 PUBLIC VERSION
4 T ABLE OF ABBREVIATIONS MSD Complainant’s [Brother’s] Motion for Summary Determination of Violation Confidential Version EDIS Doc. ID 704827 (March 12, 2020) Public Version EDIS Doc. ID 705126 (March 17, 2020) Tr. Transcript Response Commission Investigative Staff's Response to Complainant's Motion for Summary Determination of Violation Confidential Version EDIS Doc. ID 705684 (March 23, 2019) Public Version EDIS Doc. ID 706999 (April 7, 2020) PUBLIC VERSION
5 I. INTRODUCTION Imitation may be the sincerest form of flattery but copying patented components of copiers and printers is not flattery; it is infringement. And importing copied components is unlawful under section 337 of the Tariff Act of 1930. In this investigation, the complainant has demonstrated through undisputed evidence that section 337 has been violated through the importation and sale of infringing toner cartridges. A. Procedural History On August 19, 2019, complainants Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”) filed a complaint alleging violations of section 337 based upon the importation into the United States, the sale for importation, and the sale within the United States after importation certain toner cartridges, components thereof, and systems containing the same, by reason of infringement of one or more of claims 1-5, 10, and 12-15 of U.S. patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. patent No. 9,846,387 (“the ’387 patent”) (collectively, “Asserted Patents”). A supplement to the complaint was filed on August 20, 2019. EDIS Doc. ID 685778. On September 17, 2019, the Commission instituted this investigation to determine: whether there is a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain [toner cartridges, components, and systems] by reason of infringement of one or more of claims 1–5, 10, and 12–15 of the ’093 patent; claims 1, 7–11, 15, and 16 of the ’460 patent; claims 1–7 and 9 of the ’856 patent; claims 1, 4–5, and 9 of the ’456 patent; and claims 1, 3, 5, 7–12, and 18 of the ’387 patent; and whether an industry in the United States exists as required by subsection (a)(2) of section 337. PUBLIC VERSION
6 84 Fed. Reg. 49762 (Sept. 23, 2019). The plain language description of the accused products or category of accused products is “laser toner cartridges designed for use with Brother printers, fax machines, and Multi-Function Centers (‘MFCs’)1.” Id. The complaint, as supplemented, named the following 32 parties as respondents (“Respondents”): • AMI Brothers, Inc. (“AMI”) • An An Beauty Limited (“An An Beauty”) • Aster Graphics, Inc. (“Aster”) • Aztech Enterprises Limited (“Aztech”) • Billiontree Technology USA Inc. (“Billiontree”) • Carlos Imaging Supplies, Inc. (“Carlos”) • Cartridge Evolution, Inc. (“Cartridge Evolution”) • Do It Wiser, LLC (“Do It Wiser”) • Eco Imaging Inc. (“Eco Imaging”) • Ecoolmart Co. (“Ecoolmart”) • EPrinter Solution LLC (“EPS”) • E-Z Ink Inc. (“E-Z Ink”) 1 MFCs are printer/copier/scanner/fax combinations. • Globest Trading Inc. (“Globest”) • Greencycle Tech, Inc. (“Greencycle”) • Hongkong Boze Co., Ltd. (“Hongkong Boze”) • I8 International Inc. (“I8”) • IFree E-Commerce Co. (“IFree”) • Ikong E-Commerce (“Ikong”) • Intercon International Corp. (“Intercon”) • IPrint Enterprise Limited (“IPrint”) • Linkyo Corp. (“Linkyo”) • LD Products, Inc. (“LD Products”) • Mangoket LLC (“Mangoket”) • New Era Image LLC (“New Era”) PUBLIC VERSION
10 The Commission investigative staff (“Staff”) is a party to this investigation. 84 Fed. Reg. at 49763. Pending before me is an unopposed motion for summary determination filed by Brother seeking an initial determination that Respondents violated Section 337 and that Brother satisfies the domestic industry requirement of Section 337. Motion Docket No. 1174-32 (EDIS Doc. ID 704827) (“MSD”). The motion also seeks a recommended determination that the Commission issue a general exclusion order pursuant to 19 U.S.C. § 1337(d)(2)(A) and (B) covering toner cartridges and components thereof that infringe the Asserted Patents (or in the alternative limited exclusion orders against each of Respondents) and setting various bond rates for accused products imported during the Presidential review period. Id. B. The Parties 1. Complainants Complainants are three related entities, as laid out below. a) Brother Industries, Ltd. Complainant Brother Industries, Ltd. (“BIL”), also known as Brother Kogyo Kabushiki Kaisha, is a corporation duly organized and existing under the laws of Japan. Its principal place of business is 15-1, Naeshiro-cho, Mizuho-ku Nagoya-shi, Aichi-ken, Japan 467-8561. Ex. 6, Declaration of Donald Cummins at ¶ 6 (Mar. 9, 2020) (“Cummins Decl.”). BIL is the owner of the entire right and title to, and interest in, the Asserted Patents. Exs. 6-C (’093 Assignment); 6-D (’460 Assignment); 6-E (’856 and ’456 Assignments); 6-F (’387 Assignment). b) Brother International Corporation (U.S.A.) Complainant Brother International Corporation (U.S.A.) (“BIC”) is a wholly-owned subsidiary of BIL and is a corporation duly organized and existing under the laws of the State of Delaware. Cummins Decl. at ¶ 10. Its principal place of business is 200 Crossing Boulevard, PUBLIC VERSION
11 Bridgewater, New Jersey 08807. Cummins Decl. at ¶ 11. BIC markets, sells, and supports the industrial products, home appliances, and business products manufactured by BIL and Brother Industries (U.S.A.), Inc. (“BIUS”), including printers and printer/copier/scanner/fax combinations (also called “Multi-Function Centers” or “MFCs”). Cummins Decl. at ¶ 12; Ex. 6-G (“About BIC” webpage) at 1; Ex 6-H at 2; Ex. 6-I at 1, 3; Ex. 6-J at 2, 3. c) Brother Industries (U.S.A.), Inc. BIUS is a wholly owned subsidiary of BIC and is a corporation duly organized and existing under the laws of the State of Delaware. Cummins Decl. at ¶¶ 35, 36. Its principal place of business is 7819 North Brother Boulevard, Bartlett, Tennessee 38133. Id. at ¶ 36. BIUS was incorporated in 1986 and manufactures various domestic goods, including printing equipment. Cummins Decl. at ¶ 37; Ex. 6-G (“About BIC” webpage) at 1; Ex. 6-AC (Bloomberg page about BIUS) at 1. BIUS also has a substantial business in refilling and reselling used toner cartridges and in refurbishing used printers and MFCs returned by customers. Cummins Decl. at ¶ 45; Ex. 6-H at 15. 2. Respondents Of the 32 respondents named in Brother’s initial complaint, 10 named respondents were terminated from this Investigation, and 21 were found in default. Only one respondent remains active in the investigation. a) Aster Aster is the only respondent that has not been found in default or been terminated from this Investigation. However, Aster has stipulated to “waive each of its claims and affirmative defenses” as to the products at issue in the pending motion for summary determination. Ex. 7 at ¶ 2.2; see PUBLIC VERSION
12 EDIS Doc. ID 704103 (Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation). Aster has also agreed “not to oppose any motion by Brother for summary by Brother for summary determination of violation of Section 337 as to the Original Design Products in this Investigation.” Id. at ¶ 2.4. Aster is a California corporation with a principal place of business at 12000 Magnolia Avenue, Suite 101, Riverside, California 92503. Ex. 5 at ¶ 3.18. Aster is a manufacturer and distributor of printer consumable products. Id. at ¶ 3.19. Aster imports, offers for sale, and sells after importation into the United States toner cartridges through the website www.goaster.com. Id. at ¶ 3.26. b) Terminated Respondents Respondents EPS, IFree, New Era, OW, Ms. Meng, Triple Best, V4ink, Cartridge Evolution, E-Z Ink, and Linkyo were terminated from this Investigation for the reasons detailed below. EPS and IFree were terminated from this Investigation pursuant to Commission Rule 210.21(a)(1) after Brother and the Commission were unable to serve them with copies of the complaint. Ex. 2; Order No. 32. New Era, OW Supplies, Ms. Meng, Triple Best, V4Ink, Cartridge Evolution, E-Z Ink, and Linkyo were terminated from this investigation pursuant to Commission Rule 210.21(c) after stipulating to consent orders. Order Nos. 10 (New Era), 17 (OW Supplies), 18 (Triple Best), 28 (Ms. Meng), 33 (V4Ink), 36 (Cartridge Evolution), 37 (Linkyo), and 38 (E-Z Ink). c) Defaulting Respondents Respondents An An Beauty, AMI, Aztech, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD PUBLIC VERSION
13 Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui (collectively, the “Defaulting Respondents”) were found in default. (1) AMI AMI is a California corporation with a principal place of business at 1370 Valley Vista Drive, Suite 200, Diamond Bar, California 91765 that is in the wholesale and retail business. Ex. 5 at ¶ 3.8. AMI owns the “Arthur Imaging” registered trademark and operates the website arthurimaging.com through which it offers for sale Arthur Imaging-branded toner cartridges. Id. at ¶¶ 3.9-3.10. AMI also offers for sale Arthur Imaging-branded toner cartridges through the “Arthur Office Supply” storefront on Amazon.com. Id. at ¶ 3.11. (2) An An Beauty An An Beauty is a limited liability corporation organized and existing under the laws of Hong Kong with a principal place of business at Flat/Room 2104 21/F, Mongkok Commercial Centre, 16 Argyle Street, Mongkok KL, Hong Kong 999077. Ex. 5 at ¶ 3.12. An An Beauty owns the “CMYBabee” registered trademark and offers for sale CMYBabee-branded toner cartridges through its website cmybabee.com and the Babeeink storefront on Amazon.com. Id. at ¶¶ 3.13- 3.15. (3) Aztech Aztech is a limited liability corporation organized and existing under the laws of Hong Kong with a principal place of business at Units 1206, 12/F, Cheuk Nang Center, 9 Hillwood Road, Kowloon, Hong Kong 999077. Ex. 5 at ¶ 3.30. Aztech owns an “Aztech” registered trademark and offers for sale Aztech-branded toner cartridges through the website aztech-supplies.com and through the AZ-TECH and Chessmo storefronts on Amazon.com. Id. at ¶¶ 3.31-3.34. PUBLIC VERSION
14 (4) Billiontree Billiontree is a California corporation with a principal place of business at 19945 Harrison Avenue, City of Industry, California 91789. Ex. 5 at ¶ 3.36. Billiontree owns the “Toner Kingdom” registered trademark and offers for sale Toner Kingdom-branded toner cartridges through the website billion-tree.com and through the Palmtree Store and YangM storefronts on Amazon.com. Id. at ¶¶ 3.37-3.39. (5) Carlos Imaging Carlos Imaging was a California corporation with a principal place of business at PMB 540, 17128 Colima Road, Hacienda Heights, California 91745, that was dissolved in January 2017. Ex. 5 at ¶¶ 3.41, 3.43. Carlos Imaging owns the “Green Toner Supply” registered trademark and offered for sale Green Toner Supply-branded toner cartridges. Id. at ¶ 3.42. Despite Carlos Imaging’s dissolution, Green Toner Supply-branded toner cartridges are still being sold and offered for sale through the Carlos Imaging storefront on Amazon.com. Id. at ¶¶ 3.43-3.44. (6) Do It Wiser Do It Wiser is a Delaware limited liability corporation with a principal place of business at 3422 Old Capital Trail, Suite 747, Wilmington, Delaware 19808. Ex. 5 at ¶ 3.45. Do It Wiser owns the registered trademark “Do It Wiser” under which it offers for sale toner cartridges through the imagetoner.com and doitwiser.com websites and through the Do It Wiser storefront on Amazon.com. Id. at ¶¶ 3.46-3.49. (7) Eco Imaging Eco Imaging is a California corporation with a principal place of business at PMB A839, 14252 Culver Drive, Irvine, California 92604. Ex. 5 at ¶ 3.50. Eco Imaging owns the “Cool Toner” registered trademark and offers for sale Cool Toner-branded toner cartridges through the PUBLIC VERSION
15 website us.cooltoner.com and through the Toner H Party, Office and Warehouse Supplies, and King Kong storefronts on Amazon.com. Id. at ¶¶ 3.51-3.53. (8) Ecoolmart Ecoolmart is a California corporation with a principal place of business at 163 University Parkway, Pomona, California 91768. Ex. 5 at ¶ 3.55. Ecoolmart owns the registered trademark “Hi-Vision Hi-Yields” and offers for sale Hi-Vision Hi-Yields-branded toner cartridges through the “Vision Supplies” storefront on Amazon.com. Id. at ¶¶ 3.57-3.58. (9) Globest Globest is a California corporation with a principal place of business at 1251 South Rockefeller Avenue, Unit B, Ontario, California 91761. Ex. 5 at ¶ 3.59. Globest owns the registered trademark “InkeSale” and offers for sale InkeSale-branded toner cartridges through its website inkesale.com and through the ManyCartridges, Limito, Global Toner, and VP6 storefronts on Amazon.com. Id. at ¶¶ 3.60-3.62. (10) Greencycle Greencycle is a California corporation with a principal place of business at 9638 Rush Street, Unit E, South El Monte, California 91733. Ex. 5 at ¶ 3.63. Greencycle offers for sale Greencycle-branded toner cartridges through the Quicktoner storefront on Amazon.com. Id. at ¶ 3.65. (11) Hongkong Boze Hongkong Boze is an entity organized and existing under the laws of Hong Kong with a principal place of business at Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi Kok, KL Hong Kong 999077. Ex. 5 at ¶ 3.66. Hongkong Boze offers for sale Greensky-branded PUBLIC VERSION
16 toner cartridges through its website greenskytoner.com and through the Fituwork and Greensky storefronts on Amazon.com. Id. at ¶¶ 3.67-3.69. (12) I8 I8 is a California corporation with a principal place of business at 19961 Harrison Avenue, City of Industry, California 91789. Ex. 5 at ¶ 3.71. I8 owns the “Ink4work” registered trademark and offers for sale Ink4work-branded toner cartridges through the INK4WORK storefront on Amazon.com. Id. at ¶¶ 3.72-3.73. (13) Ikong Ikong is a California corporation with a principal place of business at PMB 429, 385 South Lemon Avenue, Suite E, Walnut, California 91789. Ex. 5 at ¶ 3.77. Ikong offers for sale IKONG- branded toner cartridges through the IKONG and Lyc_usa storefronts on Amazon.com. Id. at ¶ 3.78. (14) Intercon Intercon is a California corporation with a principal place of business at PMB 109, 407 West Imperial Highway, Suite H, Brea, California 92821. Ex. 5 at ¶ 3.82. Intercon owns the “Arcon” registered trademark and offers for sale Arcon-branded toner cartridges through the iarcon.com website and through the Arcon storefront on Amazon.com. Id. at ¶¶ 3.83-3.85. (15) IPrint IPrint is an entity organized and existing under the laws of Hong Kong located at Rooms 1318-19, 13/F Hollywood Plaza, 610 Nathan Road, Mongkok Kowloon, Hong Kong 999077. Ex. 5 at ¶ 3.87. IPrint owns the “Toner Bank” registered trademark and offers for sale Toner Bank- branded toner cartridges through the Toner Bank storefront on Amazon.com. Id. at ¶¶ 3.88-3.89. PUBLIC VERSION
17 (16) LD Products LD Products is a California corporation with a principal place of business at 3700 Cover Street, Long Beach, California 90808. Ex. 5 at ¶ 3.96. LD Products owns the “LD” and “Speedyinks” registered trademarks. Exs. 5 at ¶¶ 3.97, 3.98; 5-121; 5-125. LD Products offers for sale LD-branded toner cartridges through the website ldproducts.com and the LD Products storefront on Amazon.com. Exs. 5 at ¶ 3.99; 5-124. LD Products offers for sale Speedyinks- branded toner cartridges through the Speedy Inks storefront on Amazon.com. Exs. 5 at ¶ 3.101; 5-126. (17) Mangoket Mangoket is a California limited liability corporation with a principal place of business at 1641 West Main Street, Suite 222, Alhambra, California 91801. Ex. 5 at ¶ 3.93. Mangoket offers for sale EPS-branded toner cartridges through the MANGOKET storefront on Amazon.com. Id. at ¶¶ 3.94. (18) Solong Solong is a limited liability company organized and existing under the laws of Hong Kong with a principal place of business at Flat/Room 19C Lockhart Center 301-307 Lockhart Road, Wan Chai, Hong Kong 999077. Ex. 5 at ¶ 3.80. Solong offers for sale IKONG-branded toner cartridges through the ikong-world.com website. Id. at ¶ 3.81. (19) Smartjet Smartjet is a limited liability company organized and existing under the laws of Hong Kong with a principal place of business at Flat/Room A 20/F, Kiu Fu Commercial Building, 300 Lockhart Road, Wan Chai, Hong Kong 999077. Ex. 5 at ¶ 3.115. Smartjet owns the registered PUBLIC VERSION
18 trademark “MIROO” and offers for sale MIROO-branded toner cartridges through the usa- miroo.com website and through the Linkinc storefront on Amazon.com. Id. at ¶¶ 3.116-3.118. (20) Super Warehouse Super Warehouse is a Washington corporation with a principal place of business at 1160 Yew Avenue, DSS-5179, Blaine, Washington 98230. Ex. 5 at ¶ 3.119. Super Warehouse owns the “Inktoneram” registered trademark and offers for sale Inktoneram-branded toner cartridges on the super-warehouse.com website and through the Inktoneram storefront on Amazon.com. Id. at ¶¶ 3.120-3.122. (21) Xiaohui Xiaohui is an entity organized and existing under the laws of China with a principal place of business at Room 502, Factory Five, No. 12, Pingdong 3 rd Road, Nanping Keji Industrial Park, Xiangzhou District, Zhuhai, China 519000. Ex. 5 at ¶ 3.145. Xiaohui owns the registered trademark “JARBO” and offers for sale JARBO-branded toner cartridges through its website jarbo-world.com and through the Slsink, TieWrapsNation, and JARBO storefronts on Amazon.com. Id. at ¶¶ 3.146-3.148. C. The Technology at Issue Printers, fax machines, and MFCs use toner cartridges to print images on e.g. paper. Ex. 5 at ¶ 4.1, Cummins Decl. Ex. 6 at ¶ 64. Toner is transferred from the toner cartridge to paper via a system of electrically charged components. Id. at ¶ 64. A toner cartridge generally includes a toner hopper, an agitator, a developing chamber, a supply roller, and a developing roller, as depicted below: PUBLIC VERSION
19 Id. at ¶ 73. Toner is stored in the toner hopper and moved to the supply roller when the agitator rotates. Id. at ¶ 74. The supply roller and the developing roller include electrodes that charge the toner with a positive electrostatic charge. Id. at ¶ 77 The charged toner is deposited on a photosensitive drum in the desired pattern, where it is then transferred onto paper. Id. at ¶¶ 77, 78. D. The Asserted Patents As described below, the Asserted Patents are directed to toner cartridges with certain features, including a detection gear, a supply roller electrode, and a developing roller electrode. The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a detection gear. The detection gear enables a compatible printer, fax machine, or MFC to detect the insertion of a new toner cartridge. Ex. 34 (Declaration of Jarrett Gayne) (hereinafter “Gayne Decl.”) at ¶ 53. An exemplary detection gear positioned on a side of the toner cartridge is depicted in the figure below: PUBLIC VERSION
21 MSD at 9. E. The Domestic Industry Products Brother offers five lines of toner cartridges for sale in the United States that it claims utilize the claimed technology of the Asserted patents: the “DCL,” “ECL,” “BLL,” “DLL,” and “ELL” lines (collectively the “Covered Cartridges”). Cummins Decl. ¶¶ 81-106. The toner cartridges in Brother’s DCL line are identified with model numbers TN-221BK, TN-221C, TN-221M, TN- 221Y, TN-225C, TN-225M, and TN-225Y (collectively, the “Covered 221/225 Cartridges”). Id. at ¶¶ 81, 84, 86, 89, 97, 102. The toner cartridges in Brother’s ECL line are identified with model numbers TN-223BK, TN-223C, TN-223M, TN-223Y, TN-227BK, TN-227C, TN-227M, TN- 227Y (collectively, the “Covered 223/227 Cartridges”). Id. at ¶¶ 82, 85, 87, 90, 98, 103. The toner cartridges in Brother’s BLL line are identified with model numbers TN-420 and TN-450 (collectively, the “Covered 420/450 Cartridges”). Id. at ¶¶ 82, 88, 91, 99, 104. The toner cartridges in Brother’s DLL line are identified with model numbers TN-630 and TN-660 (collectively, the “Covered 630/660 Cartridges”). Id. at ¶¶ 82, 88, 92, 100, 105. And toner cartridges in Brother’s PUBLIC VERSION
22 ELL line are identified with model numbers TN-730, TN-760, and TN-770 (collectively, the “Covered 730/760/770 Cartridges”). Id. at ¶¶ 82, 82, 88, 93, 101, 106. Within each product line, Brother’s toner cartridges are identical to each other in all respects relevant to this investigation. Id. at ¶¶ 89, 90, 91, 92, 93. The primary difference between the toner cartridges in the DCL and ECL lines is that the model numbers with “BK,” “C,” “M,” and “Y” suffixes hold black, cyan, magenta, and yellow toner, respectively, and the toner cartridges with higher model numbers (e.g., TN-225C) are filled with more toner than those with lower model numbers (e.g., TN-221C). Id. at ¶¶ 86, 87, 89, 90. The toner cartridges with higher model numbers in the BLL, DLL, and ELL lines also are filled with more toner than those with lower model numbers, but all model numbers within the BLL, DLL, and ELL lines are filled with black toner. Id. at ¶¶ 88, 91, 92, 93. Brother’s DCL, ECL, BLL, DLL, and ELL product lines also include compatible printers, fax machines, and MFCs with corresponding model numbers (“Related Products”). F. The Accused Products Brother has defined the products accused in this investigation as toner cartridges designed to be compatible with Brother’s printers, fax machines and MFCs in the DCL, ECL, BLL, DLL, and ECL lines of products. See, e.g., Ex. 5 at ¶¶ 1.3-1.5, 4.1; 84 Fed. Reg. 49762. The products identified by Brother include toner cartridges marketed as substitutes for Brother’s TN-221BK, TN-221C, TN-221M, TN-221Y, TN-225C, TN-225M, and TN-225Y toner cartridges (collectively, the “Accused 221/225 Cartridges”); Brother’s TN-223BK, TN-223C, TN- 223M, TN-223Y, TN-227BK, TN-227C, TN-227M, TN-227Y toner cartridges (collectively, the “Accused 223/227 Cartridges”); Brother’s TN-420 and TN-450 toner cartridges (collectively, the “Accused 420/450 Cartridges”); Brother’s TN-630 and TN-660 toner cartridges (collectively, the “Accused 630/660 Cartridges”); and Brother’s TN-730, TN-760, and TN-770 toner cartridges PUBLIC VERSION
24 ID 700411) (“Globest Import. Stip.”) Greencycle Greencycle Ex. 5 at ¶ 3.64, 3.65, 7.53; Exs. 5-80, 5-81, 5-253 Honkong Boze Greensky Ex. 5 at ¶ 3.67, 3.69, 7.55; Exs. 5-84, 5-87,5-255 I8 Ink4work Ex. 5 at ¶ 3.72, 3.73, 7.60; Exs. 5-90, 5-91, 5-257 Ikong and Solong Ikong Ex. 5 at ¶ 3.75, 3.78, 3.81, 7.64; Exs. 5-95, 5-99, 5-100, 5-261 Intercon Arcon Ex. 5 at ¶ 3.83, 3.85, 7.66; Exs. 5-104, 5-106, 5-263 IPrint Toner Bank Ex. 5 at ¶ 3.88, 3.89, 7.73; Exs. 5-107, 5-108, 5-264 Mongoket EPS Ex. 5 at ¶ 3.91, 3.94, 7.78; Exs. 5-109, 5-117, 5-265 LD Products LD Products, Speedyinks Ex. 5 at ¶ 3.97, 3.99, 3.100, 3.101, 7.82; Exs. 5-121, 5-124, 5-125, 5-126, 5-267, 5-269 Smartjet MIROO Ex. 5 at ¶ 3.116, 3.118, 7.90; Exs. 5-147, 5-151, 5-277 Super Warehouse Inktoneram Ex. 5 at ¶ 3.120, 3.122, 7.92; Exs. 5-154, 5-156, 5-279 Xiaohui JARBO Ex. 5 at ¶ 3.146, 3.148, 7.102; Exs. 5-183, 5-186, 5-289 Multiple brands are associated with Aster because Aster is the supplier of Accused Products to An An Beauty, Aztech, Eco Imaging, Hong Kong Boze, I8 International, Intercon, IPrint, and Mangoket. Aster Import. Stip. at ¶ 3, Ex. A. Brother’s experts grouped the Accused Products into three groups of products based on features in the claims of the Asserted Patents. Those product groups are described below. 1. Accused Group 1 Products Brother alleges that Respondents’ toner cartridges designed as substitutes for Brother’s TN-221BK, TN-221C, TN-221M, TN-221Y, TN-223BK, TN-223C, TN-223M, TN-223Y, TN- 225C, TN-225M, TN-225Y, TN-227BK, TN-227C, TN-227M, and TN-227 toner cartridge models (collectively, “Accused Group 1 Products”) infringe the following claims of the ’093 and ’460 patents (collectively, “Asserted Group 1 Patents”): PUBLIC VERSION
26 TN-225 and TN-227–compatible brands, as shown below.4,5 Gayne Decl. at ¶ 4. 2. Accused Group 2 Products Brother alleges that Respondents’ toner cartridges designed as substitutes for Brother’s TN-420, TN-450, TN-630, TN-660, TN-730, TN-760, and TN-770 toner cartridges (collectively, “Accused Group 2 Products”) infringe the following claims of the ’856 and ’456 patents 4 Aster supplies Accused Products to Eco Imaging, I8, Intercon, and IPrint. Aster and Brother’s Joint Stipulation as to Importation at ¶ 6 (Jan. 30, 2020) (EDIS Doc. ID 700726) (“Aster Import. Stip.”). 5 Brother and Aster stipulated that the Arcon-branded TN-225C compatible toner cartridge and the Arcon-branded TN-227C compatible toner cartridge are each “representative of all such compatible toner cartridges.” Aster Import. Stip. at ¶¶ 10-11. PUBLIC VERSION
28 Linkyo Import. Stip. at ¶ 20, Ex. A; Cartridge Evolution Import. Stip. at ¶ 15, Ex. A; Globest Import. Stip. at ¶ 18, Ex. A. Based on this, Brother’s expert, Guerry Grune, identified the Accused Group 2 Products by TN-450, TN-660, and TN-760 compatible brands, as shown below.7,8,9 7 Dr. Grune included in his chart respondents and products that have been terminated from this investigation, such as Linkyo and V4ink. Ex. 33 at 38. I have omitted those respondents and products here. 8 Aster supplies Accused Products to An An Beauty, Aztech, Carlos Imaging, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket. Aster Import. Stip. at ¶ 6. 9 Brother and Aster stipulated that the Arcon-branded TN-450 compatible toner cartridge, the Arcon-branded TN-660 compatible toner cartridge, and the Arcon-branded TN-760 compatible toner cartridge are each “representative of all such compatible toner cartridges.” Aster Import. Stip. at ¶¶ 12-14. PUBLIC VERSION
30 Gayne Decl. at ¶ 5. 4. Representative Products Brother’s experts, Mr. Gayne and Dr. Grune, evaluated each of the Accused Products individually and thoroughly and both determined that many of the products are functionally identical for purposes of analyzing infringement of the asserted patents. Grune Decl. at ¶ 40; Gayne Decl. at ¶ 8. In line with those conclusions, both experts divided the Accused Products according to “type” and provided separate infringement analyses for each Accused Product type. MSD App’x B (cross-reference to claim charts for each product accused of infringing the ’093 patent), MSD App’x C (same for ’460 patent), MSD App’x D (same for ’856 patent). MSD App’x PUBLIC VERSION
32 Gayne Decl. at ¶ 9. Dr. Grune grouped the Accused Group 2 Products as follows: PUBLIC VERSION
33 Grune Decl. at ¶ 41. The conclusions that Dr. Grune and Mr. Gayne drew about representative products are based on their careful examination of each Accused Product model. No evidence contradicts their findings or their conclusions about representative products. I therefore conclude that the products identified in the charts above are representative of the other products indicated at least so far as is material to the patent claims around which Dr. Grune and Mr. Gavne organized their respective analyses. PUBLIC VERSION
34 5. Newly Designed Products During the course of the investigation, respondents AMI, Cartridge Evolution, E-Z Ink, Globest, and Linkyo introduced certain newly designed toner cartridges (“Newly Designed Products”) as replacements for the initially Accused Products (“Original Design Products”). See Brother and AMI Joint Stipulation as to Original and Newly Designed Products at pp. 1-2 (Feb. 3, 2020) (EDIS Doc. ID 701193); Brother and Cartridge Evolution Joint Stipulation as to Original and Newly Designed Products at pp. 1-2 (Feb. 3, 2020) (EDIS Doc. ID 701213); Brother and E-Z Ink Joint Stipulation as to Original and New Designed Products at pp. 1-2 (Feb. 3, 2020) (EDIS Doc. ID 701191); Brother and Globest Joint Stipulation as to Original and Newly Designed Products at pp. 1-4 (Feb. 7, 2020) (EDIS Doc. ID 701816); Brother and Linkyo Joint Stipulation as to Original and Newly Designed Products at pp. 1-4 (Feb. 7, 2020) (EDIS Doc. ID 701890). Brother stipulated that it would not accuse the Newly Designed Products of infringement in this investigation. See Brother and AMI Joint Stipulation as to Original and Newly Designed Products at ¶¶ 2-3, 12-14; Brother and Cartridge Evolution Joint Stipulation as to Original and Newly Designed Products at ¶¶ 2-3, 13-15; Brother and E-Z Ink Joint Stipulation as to Original and New Designed Products at ¶¶ 2-3, 13-15; Brother and Globest Joint Stipulation as to Original and Newly Designed Products at ¶¶ 2-3, 13-15; Brother and Linkyo Joint Stipulation as to Original and Newly Designed Products at ¶¶ 2-3, 12-14. Accordingly, I do not find that any of the Newly Designed Products infringe any of the Asserted Patents. II. JURISDICTION & IMPORTATION A. Subject Matter Jurisdiction Section 337 confers subject matter jurisdiction on the Commission to investigate, and if appropriate, to provide a remedy for, unfair acts and unfair methods of competition in the PUBLIC VERSION
35 importation of articles into the United States and the sale of such articles. See 19 U.S.C. §§ 1337(a)(1)(B) and (a)(2). Brother filed a complaint alleging a violation of section 337, and the Commission has subject matter jurisdiction over the complaint. See Amgen, Inc. v. Int’l. Trade Comm’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990). B. Personal Jurisdiction No party has contested personal jurisdiction. By appearing and participating in the investigation, Aster has consented to personal jurisdiction. See, e.g., Certain Pocket Lighters, 337- TA-1142, ID at 12 (Feb. 12, 2020) (EDIS Doc. ID 706458) (Public Version), unreviewed in pertinent part, 85 Fed. Reg. 23528 (EDIS Doc. ID 709087). The Commission has personal jurisdiction over Defaulting Respondents AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Intercon, LD Products, Mangoket, Super Warehouse because they are companies located within the United States. See 19 U.S.C. § 1333(b); U.S. Int’l Trade Comm’n v. ASAT, Inc., 411 F.3d 245, 246 (D.C. Cir. 2005) (“section 333(b) of the Tariff Act of 1930 authorizes nationwide service of process”); Certain Pocket Lighters, ID at 12, unreviewed in pertinent part, 85 Fed. Reg. 23528 (EDIS Doc. ID 709087). The Commission has personal jurisdiction over the remaining Defaulting Respondents as a result of their intentional and systematic contacts with the United States. See infra part II.D; see also Certain Pocket Lighters, ID at 12-13. C. In Rem Jurisdiction No party has contested the Commission’s in rem jurisdiction over the accused products. Accordingly, I have determined the Commission has in rem jurisdiction over the Accused Products. See 19 U.S.C. § 1337 (d); Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985– 86 (C.C.P.A. 1981) (the Commission has jurisdiction over imported goods). PUBLIC VERSION
36 D. Importation A single importation of an accused product is sufficient to satisfy the importation requirement of section 337. Certain Trolley Wheel Assemblies, Inv. No. 337-TA-161, Comm’n Op. at 7–8, USITC Pub. No. 1605 (Nov. 1984) (deeming the importation requirement satisfied by the importation of a single product of no commercial value). Brother submitted unrebutted evidence showing the Accused Products sold by each the Defaulting Respondents were imported. Additionally, Brother and Aster entered into a Joint Stipulation as to Importation where Aster stipulated to importation of the products it sold itself and distributed to others. A review of the importation evidence follows. AMI On January 22, 2020, Brother and AMI stipulated that at least one unit of each of certain TN-221, TN-225, TN-227, TN-660 and TN-760 toner cartridges (collectively, “Accused AMI Products”) “has been imported into the United States and/or sold for importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B) by AMI and Brother’s Joint Stipulation as to Importation (“AMI Import. Stip.”) at ¶ 3, Ex. A (Jan. 22, 2020) (EDIS Doc. ID 699881) Additionally, AMI stipulated that it “has sold after importation into the United States within the meaning of 19 U.S.C. 1337(a)(1)(B) at least one unit of each of the Accused AMI Products through www.Amazon.com and/or www.ArthurImaging.com.” Id. at ¶ 8. The accused Arthur Imaging-branded, Brother-compatible toner cartridges have been purchased from Amazon.com and shipped to a United States address. Ex. 5 at ¶ 7.6; Ex. 5-222. The purchased toner cartridges were marked “Made in China.” Ex. 5 at ¶ 7.7; Ex. 5-223. I find that the foregoing unrebutted evidence shows that the accused AMI products have been imported into the United States and that AMI sold those products after importation. PUBLIC VERSION
37 An An Beauty Brother provided evidence showing that An An Beauty sells within the United States after importation from China toner cartridges under the brand name “CMYBabee.” An An Beauty is located in China and established the brand “CMYBabee” to provide printing supplies, as shown below. See Amended Complaint Ex. 5-20; see also Ex. 5-19 (Trademark registration for CMYBabee). CMYBabee-branded, Brother-compatible TN-450, TN-660, and TN-760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-224. For example, Brother purchased through Amazon a CMYBabee-branded TN-450 toner cartridge three pack on February 19, 2019, that was delivered to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
38 Id. at 2. CMYBabee-branded toner cartridges that Brother ordered were labeled “Made in China.” Ex. 5-225. Id. at 1. PUBLIC VERSION
39 Further, Aster admitted that it imports certain accused toner cartridges and sells them to An An Beauty. See Aster Response to Complaint at ¶ 3.26 (Oct. 18, 2019) (EDIS Doc. ID 691633) (“Aster Response to Complaint”). I find that the foregoing unrebutted evidence shows that the accused An An Beauty products have been imported into the United States and that An An Beauty sold those products after importation. Aster On January 30, 2020, Aster stipulated that “it has imported into the United States and/or sold for importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B), at least one unit of each of” its Brother-compatible TN-221, TN-223, TN-225, TN-227, TN-420, TN- 450, TN-630, TN-660, TN-730, TN-760, and TN-770 toner cartridges (collectively, “the Accused Aster Products”). Aster Import. Stip. at ¶ 3, Ex. A. Further, Aster stipulated that “it has sold after importation into the United States within the meaning of 19 U.S.C. 1337(a)(1)(B) at least one unit of the Accused Aster Products through www.Aster-USA.com and www.GoAster.com.” Id. at ¶ 6. Additionally, Aster admitted that it “imports into the U.S., sells for importation and/or sells within the U.S. after importation certain Accused Cartridges to An An Beauty; Aztech; Eco Imaging; EPS; Hong Kong Boze; I8 International; Intercon; IPrint; and Mangoket.” Aster Response to Complaint at ¶ 3.26. Accused Arcon-branded, Aztech-branded, CMYBabee-branded, Cool Toner-branded, EPS-branded, Greensky-branded, Ink4work-branded, and Toner Bank-branded, Brother- compatible toner cartridges sold by Intercon, Aztech, An An Beauty, Eco Imaging, Mangoket, Hongkong Boze, I8, and IPrint have been purchased from Amazon.com and shipped to a United PUBLIC VERSION
40 States address. Ex. 5 at ¶¶ 7.11, 7.28; Compl. Exs. 234, 236, 238. Additionally, there is importation data indicating that Aster imports toner cartridges from China. Compl. Ex. 226. I find that the foregoing unrebutted evidence shows that Aster has imported the Accused Aster Products into the United States, and that Aster sold those products for importation and after importation. Aztech Aztech sells within the United States after importation from China Aztech-branded toner cartridges. Aztech is located in China, as shown by the address provided on aztech-supplies.com. Compl. Ex. 33. Id. at 1. Aztech-branded, Brother-compatible TN-450, TN-660, and TN-760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Compl. Ex. 239. For example, Brother purchased through Amazon an Aztech-branded TN-450/TN-420 black toner cartridge two pack on December 18, 2018, that was delivered to a Washington, DC, address. Id. at 2-5. The seller is listed as “AZ-TECH.” Id. PUBLIC VERSION
41 Id. at 2. Further, Aster admitted that it imports certain accused toner cartridges and sells them to Aztech. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused Aztech products have been imported into the United States and that Aztech sold those products after importation. Billiontree Billiontree sells for importation from China into the United States Toner Kingdom-branded toner cartridges. Specifically, Billiontree sells Toner Kingdom-branded toner cartridges on its website www.billion-tree.com. Compl. Ex. 40. PUBLIC VERSION
42 Id. Toner Kingdom-branded, Brother-compatible TN-450, TN-630, and TN-760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-241. For instance, on November 9, 2018, Brother purchased through Amazon a Toner Kingdom-branded TN-450 toner cartridge for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
43 Id. at 2. The Toner Kingdom-branded toner cartridges Brother purchased are labeled “Made in China.” Ex. 5-242. Id. at 1. I find that the foregoing unrebutted evidence shows that the accused Billiontree products have been imported into the United States and that Billiontree sold those products for importation. PUBLIC VERSION
44 Carlos Imaging Carlos Imaging sells after importation into the United States Green Toner Supply-branded toner cartridges. Brother provided evidence that Carlos Imaging is the owner of the “Green Toner Supply” registered trademark, which indicates that it is the source of Green Toner Supply-branded toner cartridges. Ex. 5-45. Id. Green Toner Supply-branded, Brother-compatible TN-760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-243. For instance, on November 19, 2018, Brother purchased through Amazon two GTS-branded, Brother- compatible TN-760 toner cartridges for delivery to a Washington, DC, address. Id. at 2-4. PUBLIC VERSION
45 Id. at 2. The GTS toner cartridge box is labeled “Green Toner Supply” and has a clover design that is similar to Carlos Imaging’s trademark. The “GTS” toner cartridge box that Brother received was labeled “Made in china [sic].” Ex. 5-244. Id. at 1. PUBLIC VERSION
46 I find that the foregoing unrebutted evidence shows that the accused Carlos Imaging products have been imported into the United States and that Carlos Imaging sold those products after importation. Do It Wiser Do It Wiser sells after importation into the United States Do It Wiser-branded toner cartridges. Specifically, Do It Wiser-branded, Brother-compatible TN-221/225, TN-450/420, TN-660/630, and TN-760/730 toner cartridges have been purchased from Amazon.com and shipped to a U.S. address. See Ex. 5-245. For example, on April 17, 2019, Brother purchased Do It Wiser-branded, Brother-compatible TN 221/225 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id. at 2-5. Id. at 2. Further, Do It Wiser-branded, Brother-compatible toner cartridges Brother purchased were labeled “Made in China.” Ex. 5-246. PUBLIC VERSION
47 Id. at 1. I find that the foregoing unrebutted evidence shows that the accused Do It Wiser products have been imported into the United States and that Do It Wiser sold those products after importation Eco Imaging Eco Imaging sells within the United States after importation Cool Toner-branded toner cartridges. Eco Imaging owns the “Cool Toner” registered trademark, which indicates that Eco Imaging is the source of Cool Toner-branded toner cartridges. See Ex. 5-64. PUBLIC VERSION
48 Id. The TESS information lists the registrant as “Eco Imaging Inc. DBA Cool Toner,” which further suggests that Eco Imaging is the source of Cool Toner-branded toner cartridges. Id. Cool Toner-branded, Brother-compatible TN-221/225, TN-223/227, TN-450, TN-630/660, and TN-730/760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-247. For example, on April 17, 2019, Brother purchased Cool Toner-branded, Brother-compatible TN-225 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
49 Id. at 2. The Cool Toner-branded, Brother-compatible toner cartridges were shipped with labels stating that they were “Made in China.” Ex, 5-248. Id. at 1. Moreover, Aster admitted that it imports certain accused toner cartridges and sells them to Eco Imaging. Aster’s Response to Complaint at ¶ 3.26. PUBLIC VERSION
50 I find that the foregoing unrebutted evidence shows that the accused Eco Imaging products have been imported into the United States and that Eco Imaging sold those products after importation Ecoolmart Ecoolmart sells after importation into the United States Hi-Vision Hi-Yields-branded toner cartridges. “HI-VISION HI-YIELDS” is registered trademark is owned by Ecoolmart, which indicates that Ecoolmart is the source of Hi-Vision Hi-Yields-branded toner cartridges. Ex. 5-70. Id. at 1. Hi-Vision Hi-Yields-branded, Brother-compatible toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-249. For example, Brother purchased Hi-Vision Hi-Yields-branded, Brother-compatible TN-221/225, TN-450, TN-660, and TN-760 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id. PUBLIC VERSION
51 Id. at 2. The purchased Hi-Vision Hi-Yields-branded, Brother-compatible toner cartridges were marked “Made in China.” Ex. 5-250. Id. at 1. I find that the foregoing unrebutted evidence shows that the accused Ecoolmart products have been imported into the United States and that Ecoolmart sold those products after importation. Globest PUBLIC VERSION
52 On January 27, 2020, Brother and Globest stipulated that at least one unit of each of the Ink E-Sale-, V4ink-, and Allwork-branded TN-221/TN225, TN-227, TN-450, TN-660, and TN- 760 toner cartridges (“Accused Globest Products”) “has been imported into the United States and/or sold for importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B) by Globest and Brother’s Joint Stipulation as to Importation (“Globest Import. Stip.”) at ¶ 3 (Jan. 27, 2020) (EDIS Doc. ID 700411). Further, Globest stipulated that “certain Accused Globest Products are sold and offered for sale in the United States by Globest and its authorized resellers through the ‘Global Toner,’ ‘Limito,’ ‘Many Cartridges,’ and ‘Vp6’ storefronts on www.Amazon.com” and that “[o]rders made through these storefronts are fulfilled using the Fulfillment by Amazon (‘Amazon FBA’) service.” Id. at ¶ 6. Globest also stipulated that it “has sold after importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B) at least one unit of each of the Accused Globest Products through www.Amazon.com.” Id. at ¶ 7. Brother also provided evidence that accused InkeSale-branded, Brother-compatible toner cartridges have been purchased from Amazon.com and shipped to a United States address. Ex. 5 at ¶ 7.51; Ex. 5-251. The purchased toner cartridges were marked “Made in China.” Ex. 5 at ¶ 7.52; Ex. 5-252. I find that the foregoing unrebutted evidence shows that the accused Globest products have been imported into the United States and that Globest sold those products after importation. Greencycle Greencycle sells after importation into the United States Greencycle-branded toner cartridges. Greencycle admitted that “Greencycle-branded toner cartridges sold in the United PUBLIC VERSION
53 States are imported from China.” Greencycle’s Answer to Complaint at ¶ 7.54 (Oct. 21, 2019) (EDIS Doc. ID 691808). Further, Greencycle-branded, Brother-compatible TN-225/221, TN-227, TN-450, TN-630/660, and TN-730/760 toner cartridges have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-253. For example, on April 17, 2019, Brother purchased Greencycle-branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com for shipment to a Washington, DC, address. Id. at 2-5. Id. at 2. The Greencycle-branded toner cartridges Brother purchased were labeled “Made in China.” Ex. 5-254. PUBLIC VERSION
54 Id. at 2. I find that the foregoing unrebutted evidence shows that the accused Greencycle products have been imported into the United States and that Greencycle sold those products after importation. Hongkong Boze Hongkong Boze sells within the United States after importation Greensky-branded toner cartridges. Hongkong Boze operates the website www.greenskytoner.com and sells and offers for sale Greensky-branded, Brother-compatible toner cartridges. Compl. Ex. 83. An excerpt from the website is shown below. PUBLIC VERSION
55 Id. at 1. Additionally, Greensky-branded, Brother-compatible TN-420/450, TN-630/660, and TN-760 toner cartridges have been purchased from Amazon.com and shipped to a U.S. address. See Ex. 5-255. For example, on November 9, 2018, Brother purchased Greensky-branded, Brother-compatible TN-450/420 toner cartridges from Amazon.com for shipment to a Washington, DC, address. Id. at 2-4. Id. at 2. The purchased Greensky-branded toner cartridges were labeled “Made in China.” Ex. 5-256. PUBLIC VERSION
56 Id. Further, Aster admitted that it imports certain accused toner cartridges and sells them to Hongkong Boze. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused Hongkong Boze products have been imported into the United States and that Hongkong Boze sold those products after importation. I8 I8 sells within the United States after importation Ink4work-branded toner cartridges. I8 registered the “Ink4work” trademark, which indicates that I8 is the source of “Ink4work” branded toner cartridges. Ex. 5-90. PUBLIC VERSION
57 Id. Ink4work-branded, Brother-compatible TN-221, TN-450, TN-660/630, and TN-760 toner cartridges have been purchased on Amazon.com and shipped to a United States address. See Ex. 5-257. For example, on February 19, 2019, Brother purchased ink4work-branded, Brother- compatible TN-221 toner cartridges from Amazon.com for shipment to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
58 Id. at 2. The purchased Ink4work-branded toner cartridges were labeled “Made in China.” Ex. 5-258. PUBLIC VERSION
59 Id. at 1. Further, Aster admitted that it imports certain accused toner cartridges and sells them to I8. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused I8 products have been imported into the United States and that I8 sold those products after importation. Ikong Ikong sells within the United States after importation IKONG-branded toner cartridges. Specifically, Brother purchased IKONG-branded, Brother-compatible TN-221, TN-450/420, TN-660/630, and TN-760 toner cartridges from Amazon.com (sold by IKONG) for shipment to a U.S. address. Ex. 5-261. For example, on February 19, 2019, Brother purchased IKONG-branded, PUBLIC VERSION
60 Brother-compatible TN-221 toner cartridges from IKONG on Amazon.com for shipment to a Washington, DC, address. Id. at 2-5. Id. at 2. The purchased IKONG-branded toner cartridges were labeled “Made in China.” Ex. 5-262. Id. at 1. PUBLIC VERSION
61 I find that the foregoing unrebutted evidence shows that the accused Ikong products have been imported into the United States and that Ikong sold those products after importation. Intercon Intercon sells within the United States after importation Arcon-branded toner cartridges. The “Arcon” trademark is registered to Intercon, indicating that Intercon is the source of Arcon- branded toner cartridges. Ex. 5-104. Id. Brother purchased Arcon-branded, Brother-compatible TN-221/225, TN-223/227, TN-450, TN-660, and TN-760 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-263. For example, on February 19, 2019, Brother purchased Arcon-branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Arcon) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
62 Id. at 2. Further, Aster admitted that it imports certain accused toner cartridges and sells them to Intercon. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused Intercon products have been imported into the United States and that Intercon sold those products after importation. IPrint IPrint sells within the United States after importation Toner Bank-branded toner cartridges. The “Toner Bank” registered trademark is owned by IPrint, which indicates that IPrint is the source of Toner Bank-branded toner cartridges. Ex. 5-107. PUBLIC VERSION
63 Id. Brother purchased Toner Bank-branded, Brother-compatible TN-221/225, TN-630/660, and TN-730/760 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-264. For example, on February 19, 2019, Brother purchased Toner Bank-branded, Brother- compatible TN-221/225 toner cartridges from Amazon.com (sold by Toner Bank) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
64 Id. at 2. Further, Aster admitted that it imports certain accused toner cartridges and sells them to IPrint. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused IPrint products have been imported into the United States and that IPrint sold those products after importation. LD Products LD Products sells after importation into the United States LD-branded and Speedyink-branded toner cartridges. a. LD-branded LD Products is the owner of the “LD” registered trademark, which indicates that LD Products is the source of LD-branded toner cartridges. Ex. 5-121. PUBLIC VERSION
65 Id. Brother purchased LD-branded, Brother-compatible TN-221/225, TN-630/660, and TN-730/760 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-267. For example, on February 19, 2019, Brother purchased LD-branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by LD Products) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
66 Id. at 2. The purchased LD-branded toner cartridges were labeled “Made in China.” Ex. 5-268. Id. at 1. b. Speedyinks-branded LD Products is also the owner of the “Speedyinks” registered trademark, which indicates that LD Products is the source of Speedyinks-branded toner cartridges. Ex. 5-125. PUBLIC VERSION
67 Id. Additionally, Brother purchased Speedyinks-branded, Brother-compatible TN-221/225, TN-420/450, and TN-630/660 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-269. For example, on February 19, 2019, Brother purchased Speedyinks- branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Speedy Inks) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
68 Id. at 2. The purchased Speedyinks-branded toner cartridges were labeled “Made in China.” Ex. 5-270. Id. at 1. PUBLIC VERSION
69 c. Conclusion for LD Products I find that the foregoing unrebutted evidence shows that the accused cartridges sold by LD Products have been imported into the United States and that LD Products sold those cartridges after importation. Mangoket Mangoket sells after importation into the United States after importation EPS-branded toner cartridges. Ju Shun Hsueh is either a “manager” or “member” of Mangoket. Ex. 5-113. Id. at 2. Mr. Hsueh is the owner/registration of the “EPS” registered trademark. Ex. 5-109. Brother asserts that Mr. Hsueh’s involvement in Mangoket, combined with his ownership of the EPS trademark, indicates that Mangoket is the source of EPS-branded toner cartridges. No evidence in the record contradicts this conclusion. PUBLIC VERSION
70 Id. Brother purchased EPS-branded, Brother-compatible TN-450 and TN-630/660 toner cartridges from Amazon.com for shipment to a U.S. address. See Ex. 5-265. For example, on November 8, 2018, Brother purchased EPS-branded, Brother-compatible TN-450 toner cartridges from Amazon.com (sold by Mangoket) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
71 Id. at 2. The purchased EPS-branded toner cartridges were labeled “Made in China.” Ex. 5-266. Further, Aster admitted that it imports certain accused toner cartridges and sells them to Mangoket. Aster’s Response to Complaint at ¶ 3.26. I find that the foregoing unrebutted evidence shows that the accused Mangoket products have been imported into the United States and that Mangoket sold those products after importation. Solong PUBLIC VERSION
72 Solong sells for importation into the United States Ikong-branded toner cartridges. Solong is the last listed owner of the “IKONG” registered trademark, which indicates that Solong is the source of IKONG-branded toner cartridges. Ex. 5-95. Id. As discussed above, Brother purchased IKONG-branded, Brother-compatible toner cartridges labeled “Made in China” from Amazon.com for delivery to an address in the United States. See Exs. 5-261, 5-262. PUBLIC VERSION
73 I find that the foregoing unrebutted evidence shows that the accused Solong products have been imported into the United States and that Solong sold those products for importation. Smartjet Smartjet sells for importation into the United States MIROO-branded toner cartridges. Smartjet is the last known owner of the “MIROO” registered word and design trademarks, which indicates that Smartjet is the source of MIROO-branded toner cartridges. Ex. 5-147, Compl. Ex. 148. PUBLIC VERSION
74 Ex. 5-147. PUBLIC VERSION
75 Compl. Ex. 148. Brother purchased MIROO-branded, Brother-compatible TN-221/225 and TN-450 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-277. For example, on February 19, 2019, Brother purchased MIROO-branded, Brother-compatible TN- 221/225 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id. at 2-5. Id. at 2. PUBLIC VERSION
76 The purchased MIROO-branded toner cartridges were labeled “Made in China.” Ex. 5-278. Id. at 2. I find that the foregoing unrebutted evidence shows that the accused Smartjet products have been imported into the United States and that Smartjet sold those products for importation. Super Warehouse Super Warehouse sells after importation into the United States Inktoneram-branded toner cartridges. Super Warehouse is the owner of the registered “Inktoneram” trademark, and Super Warehouse also does business as Inktoneram. Ex. 5-152. These facts indicate that Super Warehouse is the source of Inktoneram-branded toner cartridges. PUBLIC VERSION
77 Id. Brother purchased Inktoneram-branded, Brother-compatible TN-221/225, TN-450, TN-660, and TN-760 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-278. For example, on February 19, 2019, Brother purchased Inktoneram-branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Inktoneram) for delivery to a Washington, DC, address. Id. at 2-5. PUBLIC VERSION
78 Id. at 2. The purchased Inktoneram-branded toner cartridges were labeled “Made in China.” Ex. 5-280. PUBLIC VERSION
79 Id. at 1. I find that the foregoing unrebutted evidence shows that the accused Super Warehouse products have been imported into the United States and that Super Warehouse sold those products after importation. Xiaohui Xiaohui sells for importation into the United States JARBO-branded toner cartridges. Xiaohui is the last listed owner of the “JARBO” registered trademark, which indicates that Xiaohui is the source of JARBO-branded toner cartridges. Ex. 5-183. PUBLIC VERSION
80 Id. Brother purchased JARBO-branded, Brother-compatible TN-221/225, TN-450, TN-660, and TN-760 toner cartridges from Amazon.com for shipment to a United States address. See Ex. 5-289. For example, on February 19, 2019, Brother purchased JARBO-branded, Brother- compatible TN-221/225 toner cartridges from Amazon.com (sold by JARBO) for delivery to a Washington, DC, address. Id. at 2-5. Id. at 2. The purchased JARBO-branded toner cartridges were labeled “Made in China.” Ex. 5-290. PUBLIC VERSION
81 Id. at 1-2. I find that the foregoing unrebutted evidence shows that the accused Xiaohui products have been imported into the United States and that Xiaohui sold those products for importation. E. Standing The evidence of record demonstrates that Brother (through BIL), as owner of the Asserted Patents by assignment, has standing to bring its complaint. Ex. 5 at ¶¶ 5.9, 5.24, 5.38; Amended Complaint Exs. 187, 188, 189, 191 (certified assignment records of Asserted Patents). Accordingly, I find that Brother has standing in this investigation. PUBLIC VERSION
82 III. LEGAL PRINCIPLES A. Domestic Industry For a patent-based complaint, a violation of section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent . . . concerned, exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2). This domestic industry requirement of section 337 is often described as having an economic prong and a technical prong. InterDigital Commc’ns, LLC v. Int'l Trade Comm’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, USITC Pub. 4120, 2009 WL 5134139 (Dec. 2009), Comm’n Op. at 12-14. The complainant bears the burden of establishing that the domestic industry requirement is satisfied. See Certain Set-Top Boxes and Components Thereof, Inv. No. 337-TA-454, ID at 294, 2002 WL 31556392 (June 21, 2002) (unreviewed by Commission in relevant part). 1. Economic Prong Section 337(a)(3) sets forth the following economic criteria for determining the existence of a domestic industry in such investigations: (3) For purposes of paragraph (2), an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned - (A) significant investment in plant and equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. Given that the statutory criteria are listed in the disjunctive, satisfaction of any one of them will be sufficient to meet the economic prong of the domestic industry requirement. See Certain Variable PUBLIC VERSION
83 Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, USITC Pub. 3003, (Nov. 1996), Comm’n Op. at 15. 2. Technical Prong The technical prong of the domestic industry requirement is satisfied when the complainant in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Microsphere Adhesives, Process for Making Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op. at 8, USITC Pub. No. 2949, 1996 WL 1056095 (Jan. 16, 1996). “The test for satisfying the ‘technical prong’ of the industry requirement is essentially [the] same as that for infringement, i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of the evidence that the domestic product practices one or more claims of the patent. It is sufficient to show that the products practice any claim of that patent, not necessarily an asserted claim of that patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Comm’n Op. at 38 (Aug. 1, 2007). B. Patent Infringement “An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff’d, 517 U.S. 370 (1996). To support a finding of infringement, the record must show every element of the asserted patent or its equivalent in the accused device. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). PUBLIC VERSION
84 In a section 337 investigation, the complainant bears the burden of proving infringement of the asserted patent claims by a preponderance of the evidence. See Spansion Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard “requires proving that infringement was more likely than not to have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 n.10 (Fed. Cir. 2005). “When a patentee with the burden of proof seeks summary judgment of infringement, it must make a prima facie showing of infringement as to each accused device,” not merely assert that one model of the device is representative of other varying models. L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006). Expert testimony that one model is sufficiently representative of other differing models may be sufficient to support an infringement determination if the testimony explains a reasonable basis for that conclusion. Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1351 (Fed Cir. 2010) (expert’s methodology of selecting representative products that span the range of values for those parameters that most directly affect the claimed movement was reasonable and well thought out). IV. DOMESTIC INDUSTRY I begin with an examination of Brother’s undisputed domestic industry evidence to illustrate the application to the Asserted Patent claims to the relevant technology. A. Technical Prong As noted above, it is Brother’s burden to demonstrate that the Asserted Patents protect domestic industry articles. See Certain Male Prophylactic Devices, Comm’n Op. at 38. Error! Reference source not found. below shows the various Brother products alleged to practice claims of the various Asserted Patents: PUBLIC VERSION
96 Claim 1 Limitation Element in Domestic Industry Product “a supply protrusion protruding in the extending direction, the supply protrusion spaced apart from the supply connection part.” See MSD at 119–39; see also Grune Decl. at ¶¶ 397–404 (showing how the Brother TN-450 toner cartridge practices claim 2 of the ’856 patent); id. at ¶¶ 405–13 (showing how the Brother TN-450 toner cartridge practices claim 3 of the ’856 patent); id. at ¶¶ 414–23 (showing how the Brother TN-450 toner cartridge practices claim 4 of the ’856 patent); id. at ¶¶ 424–38 (showing how the Brother TN-450 toner cartridge practices claim 5 of the ’856 patent); id. at ¶¶ 439–47 (showing how the Brother TN-450 toner cartridge practices claim 6 of the ’856 patent); id. at ¶¶ 448–57 (showing how the Brother TN-450 toner cartridge practices claim 7 of the ’856 patent); id. at ¶¶ 458–66 (showing how the Brother TN-450 toner cartridge practices claim 8 of the ’856 patent); id. at ¶¶ 467–76 (showing how the TN-450 toner cartridge practices claim 9 of the ’856 patent). Based on this undisputed evidence, I find Brother is entitled to summary determination that the Brother TN-420/TN-450 and Brother TN-730/760/770 domestic industry products practice at least claim 1 of the ’856 patent. 4. ’456 patent Brother asserts that its TN-420/450, TN-630/660, and TN-730/760/770 toner cartridges practice the following claims of the ’456 patent: PUBLIC VERSION
104 Based on this undisputed evidence, I find Brother is entitled to summary determination that the Brother TN-221/TN-225, TN-223/227, and Brother TN-730/760/770 domestic industry products practice at least claim 1 of the ’387 patent. B. Economic Prong As discussed below, Brother has proffered substantial, reliable, and probative evidence showing that Brother’s domestic activities satisfy the economic prong of the domestic industry requirement under section 337(a)(3)(A) and (B) with respect to the Asserted Patents.23 1. Relevant Domestic Industry Activities Brother claims a domestic industry that includes remanufacturing used Covered Cartridges and refurbishing, replacing, servicing, and supporting Related Products. Cummins Decl. at ¶ 45. As explained above, supra part I.B.1, Brother Industries, Ltd., is a Japanese company with at least two subsidiary companies in the United States: Brother International Corporation (U.S.A.) (“BIC”) and Brother Industries (U.S.A.), Inc. (“BIUS”). BIUS remanufactures Covered Cartridges, which involves cleaning used cartridges and refilling them with toner. See Cummins Decl. at ¶¶ 45, 46, 47, 57, 60, 61. BIUS also refurbishes Related Products, which involves repairing printers returned by customers. Id.. BIC replaces, services, and supports Related Products, in addition to marketing and selling the Covered Cartridges and Related Products processed by BIUS. Cummins Decl. at ¶¶ 13, 32-33, 109. To satisfy its burden, Brother’s domestic industry evidence must show there exists a domestic industry “related to” articles protected by the patent. See 19 U.S.C. 1337(a)(2). The patent claims at issue here are directed to toner cartridges. Brother avers its industry includes 23 Brother did not present evidence of a domestic industry based on research and development under section 337(a)(3)(c). PUBLIC VERSION
109 2. Allocation Methods Brother has two main domestic facilities: one in Bartlett, Tennessee, and one in Bridgewater, New Jersey. See Cummins Decl. at ¶¶11, 36. The Bartlett, Tennessee facility serves as a manufacturing, distribution, and service hub for both BIUS and BIC. See Cummins Decl. ¶¶ 22, 24. The Bridgewater, New Jersey, facility serves as BIC’s principle place of business. Cummins Decl. ¶ 19. Because only some of the products produced and serviced at these facilities are claimed domestic industry products, Brother utilized several methods to allocate costs to the claimed domestic industry products. Brother relies on five different calculations to allocate its domestic investments between the different groups of Domestic Industry Products. Two calculations relate to Brother’s investments in plant space and three relate to Brother’s labor investments. With respect to its plant investments, Brother used a calculation it called the “Support Allocation” to identify facilities used in the remanufacture of Covered Cartridges. See MSD at 179; Cummins Decl. at ¶ 118; Ex. 6-AV. Brother also used a method it called the “Remanufacture Allocation” to allocate space in its facilities to the Covered Cartridges. MSD at 179-180; Cummins Decl. at ¶ 250. Turning to labor investments, Brother’s first method, which it called the “Standard Time Allocation,” identified the amount of time an employee was employed in the remanufacture of Covered Cartridges by BIUS. MSD at 178, Cummins Decl. at ¶ 152. Next, Brother allocated labor costs based on the total units of Related Products that BIUS refurbished compared to all other printers, fax machines, and MFCs that BIUS refurbished, a method Brother calls “Refurbishment Allocation.” MSD at 179; Cummins Decl. at ¶ 218. And finally, Brother calculated the compensation of BIC employees responsible for selling Domestic Industry Products using a PUBLIC VERSION
118 particularly as a percentage of Brother’s total domestic expenditure of million for these types of services for all products. This finding alone is sufficient to conclude that Brother has proven a domestic industry under section 337(a)(3)(A) and (B). In addition to its Covered Cartridge investments, Brother has invested million in the labor and capital for the Related Products, which rely upon the Covered Cartridges to operate. This total expenditure of million in Covered Cartridges and Related Products is significant, as it is an even greater percentage of Brother’s total domestic expenditure of million for these types of services for all products. I find, based on the undisputed, substantive, reliable, and probative evidence explained above, that Brother has met its burden of showing that a domestic industry exists related to articles protected by the Asserted Patents, as defined in both section 337(a)(3)(A) and (B). V. INFRINGEMENT Brother has shown undisputed evidence that the Defaulting Respondents and Aster each infringe various Asserted Claims of the Asserted Patents, as described below. A. Representative Products As discussed in Section I.F.4 above, Brother’s experts examined each accused product model individually. The experts then organized the Accused Products into three groups based on the Asserted Patents they allegedly infringe. The experts created subgroups for similar model types and selected a representative product for each model type. The tables below summarize this information, discussed in Section I.F.4. above. PUBLIC VERSION
119 PUBLIC VERSION
120 PUBLIC VERSION
121 Brother’s experts examined each toner cartridge by, for example, photographing the accused product and its packaging, disassembling the accused product, testing the conductivity of certain components, and reassembling the accused product. Grune Decl. at ¶ 64, Gayne Decl. at ¶ 102. Based on his analysis, Mr. Gayne concluded that the Accused Group 1 and Group 3 Products are “identical in relevant respects with respect to my infringement analysis.” Gayne Decl. PUBLIC VERSION
122 at ¶ 105. Because of this, he concluded that “the infringement analysis for each of the Accused Group 1 Products is substantively the same” and chose AMI’s Arthur Imaging-branded TN-225 and TN-227 compatible products as representative examples of the Accused Group 1 Products. Id. at ¶ 108. For the same reasons, Mr. Gayne chose to use AMI’s Arthur Imaging-branded TN-225, TN-227, and TN-760 compatible products as representative examples of the Accused Group 3 Products. Id. at ¶ 111. Mr. Gayne also included a separate analysis of the Type-B Accused Group 1 and Group 3 Products where those products differed from the other Accused Group 1 and 3 Products. See, e.g., id. at ¶¶ 109, 112. Similarly, Dr. Grune concluded that “there are very few differences between the Accused Group 2 Products” and that where differences exist, they “are insignificant for purposes of determining infringement.” Grune Decl. at ¶ 68. Accordingly, Dr. Grune chose to use the Type 1 InkeSale-branded TN-450, TN-660, and TN-760 Accused Products for his exemplary infringement analysis. Id. at ¶ 69. Staff calls attention to the differing ways the two experts grouped the TN-760 Accused Products. Staff notes that each expert chose different representative products for each “type” of TN-760 Accused Product “despite the fact that those products are allegedly identical to one another in all respects.” Staff Reply at 93 (citing Grune Decl. at ¶ 40; Gayne Decl. at ¶ 8). But as Brother explains, the experts each “focused on different features of the Accused Cartridges when identifying variations” between models because the experts were considering the models’ features with respect to different patent claims. MSD at 21, fn 3. Upon review, I find each expert’s selection of representative products to be reasonable in the relevant context. Each expert carefully analyzed every Accused Product model and categorized each model in a manner consistent with the relevant patent claims. No evidence contradicts either expert’s categorizations. PUBLIC VERSION
123 B. Asserted Group 1 Patents The Asserted Group 1 Patents are the ’093 and ’460 patents. Brother contends various products of respondents AMI, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui infringe the Asserted Group 1 patent claims. As noted in the Introduction, Brother calls this set of products the Accused Group 1 Products. Brother’s expert Mr. Gayne divided the Accused Group 1 Products into five different types (i.e., Type-A, Type-B, Type-C, Type-D, Type-E) and selected a representative product for each type. Gayne Decl. at ¶¶ 8-9. From these, Mr. Gayne selected two products, one TN-225 model and one TN-227 model, as “Representative Group 1 Products.” Id. at ¶ 108. Mr. Gayne then compared the Representative Group 1 Products to each limitation of the asserted claims of the Asserted Group 1 patents. Mr. Gayne also included a separate analysis of the Type-B Accused Group 1 Products with respect to some Asserted Group 1 Patent claims. As discussed below, I find that the Accused Group 1 Products infringe the asserted claims of the Asserted Group 1 Patents. 1. ’093 patent Brother contends the Accused Group 1 Products infringe claims 1-5, 10, and 12-15 the ’093 patent. Mr. Gayne provided a detailed, limitation-by-limitation analysis showing how, in his opinion, the Representative Group 1 Products and the Type-B Accused Group 1 Products meet the limitations of the asserted claims of the ’093 patent. Gayne Decl. at ¶¶ 114-202. Mr. Gayne also provided detailed claim charts showing how, in his opinion, the representative product for each PUBLIC VERSION
131 As detailed in this record, the Accused Group 2 Products sold by respondents An An Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket, Smartjet, Super Warehouse, and Xiaohui meet every limitation of claims 1, 4, 5, and 9 of the ’456 patent. Grune Decl. at ¶¶ ¶¶ 218-319, Exs. O-AB. Accordingly, Brother has presented substantial, reliable, and undisputed evidence that those respondents infringe 1, 4, 5, and 9 of the ’456 patent. Based on the undisputed record evidence, I conclude Brother is entitled to summary determination to that effect. D. Asserted Group 3 Patent Brother contends the Accused Group 3 Products of respondents An An Beauty, Aztech, AMI, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui infringe various claims of the ’387 patent, the only Asserted Patent in Group 3. The claims at issue are claims 1, 3, 5, 7-12, and 18. As discussed above, Mr. Gayne grouped the Accused Group 3 Products into five different types (i.e., Type-A, Type-B, Type-C, Type-D, Type-E) and selected a representative product for each type. Gayne Decl. at ¶¶ 8-9. From that set, Mr. Gayne selected three Representative Group 3 Products: one TN-225 model, one TN-227 model, and one TN-760 model. Id. at ¶ 111. Mr. Gayne compared the Representative Group 3 Products to various asserted claims of the ’387 patent. Mr. Gayne provided a detailed, limitation-by-limitation analysis showing how, in his opinion, the Representative Group 3 Products meet the limitations of various asserted claims of the ’387 patent. Gayne Decl. at ¶¶ 282-386. Mr. Gayne also provided detailed, annotated claim charts illustrating his analysis. The organization of Mr. Gayne’s analysis is summarized below. PUBLIC VERSION
133 As detailed in this record, the accused TN-225 and TN-227 products meet each limitation of claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Gayne Decl. at ¶¶ 282-386, Exs. X, Y, Z, AA, AB, AC, AD, AE, AF, AG, AH, AI. The accused TN-225 and TN-227 products are sold by the respondents indicated above in the chart in section V.A., tiled Accused Group 3 Products. The record additionally shows the accused TN-760 products meet each limitation of claims 1, 3, 5, 7-8, and 10 of the ’387 Patent. Id. The accused TN-760 products are sold by the respondents indicated in the Accused Group 3 Products chart in section V.A. above. Accordingly, Brother has presented substantial, reliable, and undisputed evidence that respondents An An Beauty, Aztech, AMI, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui infringe the claims of the ’387 patent asserted by Brother against their respective products. Based on the undisputed record evidence, I conclude Brother is entitled to summary determination to that effect. VI. CONCLUSIONS OF LAW 1. The Commission has personal jurisdiction over the parties, subject-matter jurisdiction over the investigation, and in rem jurisdiction over the accused products. 2. The importation requirement of section 337 is satisfied with respect to the Accused Products. 3. The Accused Products of respondents AMI, Aster, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Solong, Smartjet, Super Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,785,093 asserted against those respective products. 4. The Accused Products of respondents AMI, Aster, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Solong, Smartjet, Super Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,575,460 asserted against those respective products. 5. The Accused Products of respondents An An Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, PUBLIC VERSION
134 Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket, Smartjet, Super Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,568,856 asserted against those respective products. 6. The Accused Products of respondents An An Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket, Smartjet, Super Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,632,456 asserted against those respective products. 7. The Accused Products of respondents An An Beauty, Aztech, AMI, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,846,387 asserted against those respective products. 8. A domestic industry exists within the United States related to articles protected by U.S. Patent No. 9,785,093. 9. A domestic industry exists within the United States related to articles protected by U.S. Paten U.S. Patent No. 9,568,856. 10. A domestic industry exists within the United States related to articles protected by U.S. Patent No. 9,632,456. 11. A domestic industry exists within the United States related to articles protected by U.S. Patent No. 9,846,387. 12. A violation of section 337 has occurred based on the importation or sale of articles that infringe the asserted claims of U.S. Patent No. 9,785,093. 13. A violation of section 337 has occurred based on the importation or sale of articles that infringe the asserted claims of U.S. Patent No. 9,575,460. 14. A violation of section 337 has occurred based on the importation or sale of articles that infringe the asserted claims of U.S. Patent No. 9,568,856. 15. A violation of section 337 has occurred based on the importation or sale of articles that infringe the asserted claims of U.S. Patent No. 9,632,456. 16. A violation of section 337 has occurred based on the importation or sale of articles alleged to infringe the asserted claims of U.S. Patent No. 9,846,387. VII. RECOMMENDED DETERMINATION ON REMEDY & BOND I must issue a recommended determination concerning the appropriate remedy in the event that the Commission finds a violation of section 337 and I must recommend the amount of bond PUBLIC VERSION
135 to be posted for importation during any Presidential review of the Commission’s action. See 19 C.F.R. § 210.42(a)(l)(ii). A. General Exclusion Order The Commission “focus[es] principally on the statutory language itself” when determining whether to issue a general exclusion order. Certain Ground Fault Cir. Interrupters & Prod. Containing Same, Inv. No. 337-TA-615, Comm’n Op. at 25 (Mar. 26, 2009) (“Ground Fault Cir. Interrupters I”). Under section 337(d)(2), a general exclusion order is warranted in either of two circumstances: (1) when “an exclusion order limited to products of named persons” would be circumvented, or (2) when “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2)(A) and (B). Certain Cigarettes and Packaging Thereof, Inv. No. 337 TA-643, Comm’n Op. at 24 (Oct. 1, 2009) (“Cigarettes”). When some respondents default without appearing but other respondents appear and contest the complaint, section 337(d)(2) specifies additional conditions for issuing a general exclusion order. Pocket Lighters, Inv. No. 337-TA-1142, Initial Determination at 40 (Public Vers.) (Feb. 12, 2020) (EDIS Doc. ID 706458), not reviewed in pertinent part, EDIS Doc. ID 708631. A general exclusion order under section 337(d)(2) must rest upon a violation established by substantial, reliable, and probative evidence. Id. In the present investigation, some of the respondents appeared in, and contested, the investigation, while other respondents failed to appear. See supra part I.B.2. Under these circumstances, issuance of a general exclusion order under section 337(d)(2) is appropriate. See Certain Toner Cartridges, & Components Thereof, 337-TA-918 (“Toner Cartridges IV”), Comm’n Opinion at 5 (finding that the issuance of a general exclusion order under section 337(d)(2) was appropriate when not all respondents failed to appear to contest the investigation). PUBLIC VERSION
136 1. Circumvention of Limited Exclusion Orders A limited exclusion order restricts the activities of named respondents but not others. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1356-57 (Fed. Cir. 2008). If the evidence shows that named respondents would circumvent a limited exclusion order, a general exclusion order is appropriate. See Certain Ground Fault Cir. Interrupters & Prod. Containing Same, Inv. No. 337-TA-739, Comm’n Op. at 88-89, 2012 WL 2394435 at 56 (June 8, 2012) (“Ground Fault Cir. Interrupters II”) (finding a general exclusion order was appropriate based on evidence that named respondents would circumvent a limited exclusion order by changing their corporate identity). Here, there is substantial evidence that a general exclusion order is necessary to prevent Respondents named in this investigation from circumventing a limited exclusion order. The undisputed record in this investigation closely tracks the facts of prior Commission investigations into the same industry. For instance, in Investigation No. 337-TA-829 (“Toner Cartridges III”), the administrative law judge determined, and the Commission affirmed, that “it [is] common for manufacturers and sellers of aftermarket toner cartridges to do business under more than one name,” and that “foreign aftermarket toner cartridge manufacturers have the capacity to replicate their operations so as to appear to be a new business in a matter of months.” Toner Cartridges III, Inv. No. 337-TA-829, Initial Determination at 120 (EDIS Doc. ID 505712). The record here bears out such a capacity: the parent company of the sole remaining respondent in this investigation, the Aster Group, was set up in March 2011 by management of a company that entered into a consent order stipulation in investigation 337-TA-731. Toner Cartridges V, Joint Stipulation Regarding Remedy at ¶ 12-18 (EDIS Doc. ID 656538) and Initial Determination at 120 (Feb. 28, 2013) (EDIS Doc. ID 505712). The new entity was mass producing infringing toner cartridges in its factory within a month. Id. This is evidence that “th[e] same sort of scenario could repeat itself if another limited exclusion order issued.” Toner Cartridges III, Initial PUBLIC VERSION
137 Determination at 120 (Feb. 28, 2013) (relying on these same facts as to Aster); see also Certain Ink Cartridges & Components Thereof, Inv. No. 337-TA-946 (“946 Investigation”), Comm’n Op. at 7 (June 29, 2016) (EDIS Doc ID 584864) (relying on previous efforts to circumvent a general exclusion order as evidence of likelihood of circumvention in subsequent section 337 investigation). As in prior investigations in this industry, such as Toner Cartridges IV , Inv. No. 337-TA-918, Comm’n Op. at 7 (Oct. 1, 2015), several of the Respondents here sell Accused Products under multiple names on Amazon.com. See, e.g., Ex. 5 at ¶¶ 3.34, 3.39, 3.53, 3.62, 3.69, 3.78, 3.148; Exs. 5-36, 5-41, 5-66, 5-77, 5-87, 5-99, 5-186 (examples of Amazon storefronts of respondents); Globest Import. Stip. at ¶¶ 6, 7 (Globest admission of importation through Amazon.com). If limited exclusion orders were directed to the entities named as Respondents in this investigation, it is likely that the same entities would continue online sales and importation using different names. In addition, based on unrebutted evidence, I find that many of the Respondents have engaged in business practices deliberately designed to mask their identities, which makes enforcement of a limited exclusion order difficult. For example, Respondents Carlos Imaging, Eco Imaging, Ikong, and Intercon operate their businesses from rented personal mailboxes at mail and shipping stores (e.g., UPS Stores). See Ex. 5 at ¶ 3.41 (Carlos imaging is registered to a PMB); Ex. 5-42 (Carlos Imaging California Statement of Information) (Nov. 4, 2016)); Ex. 5-43 (Google Maps Street View of Carlos Imaging showing UPS store (Mar. 2018)); Ex. 5 at ¶ 3.50 (Eco Imaging is registered to a PMB); Ex. 5-60 (Eco Imaging corporate registration); Ex. 5-63 (Google Maps Street View of Eco Imaging showing UPS store); Ex. 5 at ¶ 3.77 (Ikong is registered to a PMB); Ex. 5-96 (Ikong registration); Ex. 5-98 (Google Maps Street View of Ikong showing ‘Mail PUBLIC VERSION
138 and More’ store); Ex. 5 at ¶ 3.82 (Intercon is registered to a PMB); Ex. 5-101 (Intercon registration); Ex. 5-103 (Google Maps Street View of Intercon showing UPS store); see supra part I.B.2.c). The use of rented personal mailboxes obviates the cost of setting up a brick-and-mortar storefront or warehouse, thereby making it easier to set up a new business with a different name and circumvent a limited exclusion order. Many of the Respondents also “do business under multiple names, and create an array of subsidiaries and changing corporate profiles, activities which make it difficult to enforce intellectual property rights against them.” Toner Cartridges III, Comm’n Op. at 6-7 (Jul. 29, 2013). There is substantial, unrebutted evidence such practices are widespread in the industry: • Mangoket shares executives with EPS, and both sell EPS-branded products. Ex. 5 at ¶ 3.92, 3.95, 3.98; Exs. 5-112 (EPS corporate registration), 5-113 (Mangoket corporate registration), 5-115 (Mangoket storefront on eprintersolution.com). • Do It Wiser is a single registered entity that conducts business through multiple websites with differing names like doitwiser.com and imagetoner.com. Ex. 5 at ¶ 3.46-3.48 (Do It Wiser operates through several websites); Exs. 5-51 (trademark registration for “Do It Wiser” Mark), 5-52 (Accused Products with EPS brand on doitwiser.com), 5-54 (Accused Products with EPS Brand on imagetoner.com), 5-55 (FAQ from imagetoner.com listing “help@doitwiser.com” as the contact email). • LD Products is a single registered entity that sells functionally identical infringing products under more than one brand name. Ex. 5 at ¶ 3.97-3.101, 7.80, 7.82; Ex. 5-121 (trademark registration for “LD” mark listing owner as “LD Products, Inc.”), 5-125 (trademark registration for “Speedyinks” mark listing owner as “LD Products, Inc.”). PUBLIC VERSION
139 • Certain of An An Beauty’s and Billiontree’s Accused Products shipped from different unregistered California entities (i.e., An An Mei and Palmtree) at the same address. Ex. 5 at ¶ 3.16, 3.40, 12.27; Ex. 5-23 (photo of Shipping Label for CMYBabee branded product), 5-24 (photo of shipping label for “Toner Kingdom” branded product). The operations are so intermingled that on at least one occasion, products purchased from An An Beauty arrived in “Toner Kingdom” brand box, but the box contained a “CMYBabee”-branded product. Ex. 5 at ¶ 12.27; Ex. 5-305 (“Toner Kingdom” branded box in which “CMYBabee” branded Accused Product was shipped). • A single person—Wang Zhidong—is the registrant on the U.S. trademarks used on the Accused Products of Ikong, Smartjet, Solong, and Xiaohui. Ex. 5-92 (registration for Office World mark), 5-95 (registration for IKONG mark), 5-147 (registration for MIROO mark), 5-183 (registration for “JARBO” mark). These facts show a widespread pattern within the industry generally, and among the Defaulting Respondents particularly, of operating practices that hinder or defeat the efficacy of limited exclusion orders directed only to named respondents. See Toner Cartridges III, Comm’n Op. at 6-7 (entering a general exclusion order where “defaulting respondents typically do business under multiple names, and create an array of subsidiaries and changing corporation profiles.”). In sum, I find based on the record evidence of the past and present business practices of the Respondents that a limited exclusion order would be easily circumvented. See Certain Indus. Automation Sys. & Components Thereof Including Control Sys., Controllers, Visualization Hardware, Motion & Motor Control Sys., Networking Equip., Safety Devices, & Power Supplies, Inv. No. 337-TA-1074, Comm’n Op. at 7 (Apr. 23, 2019) (“Respondents’ use of multiple different PUBLIC VERSION
140 entities to sell and import products supports a finding that a limited exclusion order would be easily circumvented.’”). 2. Pattern of Violation of Section 337 Additionally and independently, I find the record shows an undisputed a pattern of violation of section 337. This investigation initially named 32 respondents, and all of those that were successfully served were found in violation or stipulated to a consent order. Toner Cartridges III, Initial Determination at 121 (Feb. 28, 2013) (“Given the number of respondents involved, the activities of the defaulting respondents and their suppliers alone would be sufficient to demonstrate a pattern of violation.”). That alone demonstrates a widespread pattern of violation of section 337. But the Respondents here do not reflect the full scope of the infringing industry. The record shows many Respondents purchased their accused products from non-parties. See, e.g., Ex. 52 (“Linkyo purchases the products … from as finished goods.”). There also are numerous “reseller” customers in the business of distributing infringing toner cartridges in the United States. Non-party identifies over 460 U.S. customers of Accused Products in the United States, including Respondents . Ex. 59 ( Customer List), at 1, 3, 4, 6. another non-party supplier, identifies nineteen customers of Accused Products in the United States, including Respondents . Ex. 57 at ¶ 6 (Jan. 17, 2020) (EDIS Doc. ID 699551). And infringing respondent Aster acknowledges that it supplies Accused Products to at least eight of the Defaulting Respondents—An An Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket. Ex. 38, Response of Aster Graphics, Inc. to Complaint and Notice of Investigation at ¶ 3.26 (Oct. 18, 2019) (EDIS Doc ID 691633). PUBLIC VERSION
141 This multiplicity of suppliers and distributors of infringing toner cartridges qualitatively demonstrates a widespread pattern of violation. The record also quantifies the extent of the infringement: according to data furnished by Brother, Brother’s authentic branded products command Ex. 58 (Raw Sales Data); Ex. 60 (Analysis of Raw Sales Data). Indeed, the Accused Products sold comparable cartridges in both fiscal years 2017 and 2018. See Ex. 60. Respondent E-Z Ink’s Accused 221/225 Products alone in the United States during that period. Id. The record also contains substantial evidence that the source of these infringing products is difficult to identify. As found in previous investigations of this industry, “in the toner cartridge market, it is difficult to trace the origin of a particular import even when all of the players involved are operating honestly.” Toner Cartridges III, Inv. No. 337-TA-829, Initial Determination at 123 (EDIS Doc. ID 505712). The record in this investigation shows that statement is still true. Aster, for example, offers private labeling and custom packaging to its customers. Ex. 5-31 (Aster website). As Aster describes it, “[p]rivate label service provides you the opportunity to stick your own label, which contains your logo, company name, reorder number and contact information.” Id. “This legitimate practice inevitably obscures the identity of the cartridges’ original manufacturer, making enforcement of a limited exclusion order difficult at best.” Toner Cartridges III, Inv. No. 337-TA-829, Initial Determination at 124 (EDIS Doc. ID 505712). Adding to the confusion, respondents An An Beauty, Aztech, Billiontree, Eco Imaging, Globest, Hongkong Boze, I8, IPrint, and Super Warehouse each package their Accused Products in generic boxes marked only as “toner,” “toner cartridge,” “premium toner cartridge,” “laser toner cartridge,” or “laser printer toner cartridge,” omitting any identifiable branding tying their products PUBLIC VERSION
142 to their origins. See Ex. 5, Amended Complaint of Brother at ¶ 12.16; Ex. 5-299 (images of exemplary generic packaging). Ex 5-299 (excerpted). And as Aster’s website offers custom packaging bearing whatever information the seller chooses to use, enabling resellers to deliberately disguise the true manufacturer. See, e.g., Ex. 5-31. Such practice “mak[es] it easier” for the manufacturer “to evade enforcement of an LEO.” Toner Cartridges II, Comm’n Op. at 5 (Oct. 5, 2011) (EDIS Doc ID 460756). That Aster prominently offers such a service implies that it is commonly requested and used, indicating a pattern of evasion. The channels of commerce Respondents use also help conceal the identity of infringers. As discussed above, the Defaulting Respondents sell the Accused Products through popular e-commerce sites like Amazon.com, eBay.com, and Alibaba.com. See, e.g., Ex. 5 at ¶ 3.11, PUBLIC VERSION
143 Exs. 5-18, 5-222, Ex. 35 at ¶ 3.11, AMI Import. Stip. at ¶ 7, 8 (Arthur Imaging branded accused products sold through Amazon.com); Ex. 5-22, 5-224 (CMYBabee branded accused products sold through Amazon.com); Ex. 5 at ¶ 12.11, Ex. 5-298 (Alibaba.com listings for Accused Products); Ex. 5 at ¶ 12.10, Ex. 5-296 (eBay.com listing of Accused Products). As the Commission has previously found, “Major Internet websites such as Amazon.com, Craigslist.org, and Alibaba.com provide retailers of aftermarket toner cartridges with dedicated, flexible infrastructure to sell directly to U.S. consumers without revealing the true source of such cartridges.” Toner Cartridges IV, Inv. No. 337-TA-918, Comm’n Op. at 11 (Oct. 1, 2015). The record here bears that out: AMI, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Inercon, IPrint, Mangoket, Solong, Smartjet, SuperWarehouse, and Xiahui all shipped Accused Products through an Amazon fulfillment center, with only the address of the fulfillment center appearing on the shipping materials. AMI Import. Stip. at ¶ 7; Globest Import. Stip. at ¶ 6; Exs. 5-300, 5-301 (packaging labels for Accused Products shipped from Amazon fulfillment centers). In sum, Brother has established by substantial, reliable, and probative evidence a pattern of violation of section 337 by sources that are difficult to identify. See 19 U.S.C. § 1337(d)(2)(B); see also Certain Lighters, Inv. No. 337-TA-575, Comm’n Op. at 7-9 (Public Vers.) (Aug. 30, 2007) (EDIS Doc. ID 281618) (finding a general exclusion order is appropriate based on widespread unauthorized online sales and difficulty in identifying the source of infringing products). I therefore recommend the Commission issue a general exclusion order in this investigation should it find a violation of section 337. PUBLIC VERSION
144 B. Limited Exclusion Orders Section 337(d) provides that “[i]f the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States. . . .” 19 U.S.C. § 1337(d). The undisputed evidence supports a determination that Respondents have violated section 337, so the condition precedent for limited exclusion orders has been satisfied. Should the Commission find a violation and determine not to issue a general exclusion order, I recommend that the Commission issue limited exclusion orders directed to respondents Aster, An An Beauty, AMI, Aztech, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. All other Respondents are subject to consent orders entered earlier in this investigation. C. Cease and Desist Order In addition to an exclusion order, section 337(f) authorizes the Commission to order those found violating section 337 “to cease and desist from engaging in the unfair methods or acts involved.” 19 U.S.C. § 1337(f). A cease and desist order is warranted when a respondent maintains a commercially significant inventory of the infringing products in the United States. See Certain Elec. Skin Care Devices, Brushes & Chargers Therefor, & Kits Containing the Same, 337-TA- 959, Comm’n Op. at 26 (Feb. 13, 2017). Brother seeks cease and desist orders against the respondents with addresses or operations based in the United States, namely Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. PUBLIC VERSION
146 domestic inventory. See Certain Hand Dryers & Housing for Hand Dryers, Inv. No. 337-TA- 1015, Comm’n Op. at 11 (Oct. 30, 2017) (“evidence that infringing . . . products sold on Amazon.com are fulfilled from an Amazon.com facility in Kentucky . . . supports the inference that [foreign defaulting respondents] maintain a commercially significant inventory of infringing articles in the United States” and that issuance of a cease and desist order is appropriate). Accordingly, should the commission find a violation and determine, I recommend that the Commission issue cease and desist orders to respondents Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. D. Bond During Presidential Review In the event that the Commission determines to issue a remedy, the Commission must determine the amount of bond to be required of a respondent during the 60-day Presidential review period. See 19 U.S.C. §1337(j)(3). The purpose of the bond is to protect the complainant from any injury. See 19 C.F.R. §§ 210.42(a)(1)(ii), 210.50(a)(3). When reliable price information is available, the Commission has often set the bond by eliminating the differential between the domestic product and the imported, infringing product. See Microsphere Adhesives, Processes for Making Same, & Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, USITC Pub. 2949 (Dec. 8, 1995), Comm’n Op. at 24. However, where it is difficult or impossible to calculate a bond based upon price differentials, and particularly where the respondents fail to provide discovery, the Commission has set the bond at 100 percent of the entered value of the infringing imported product. See, e.g., Video Game Sys., Comm’n Op. at 5; Certain Oscillating Sprinklers, Sprinkler Components, & Nozzles, Inv. No. 337-TA-448, Limited Exclusion Order at 4-6, USITC Pub. No. 3498 (Mar. 2002) (EDIS PUBLIC VERSION
147 Doc. ID 60448) (setting bond at 100% of entered value for products of defaulting respondent). Further, the Commission may also set a bond rate of over 100% where necessary “to ensure it would completely offset any competitive advantage” enjoyed by the infringing goods. See, e.g., Certain Two-Handled Centerset Faucets & Escutcheons, & Components Thereof, Inv. No. 337- TA-422, Comm’n Op. at 10-11 (June 26, 2000) (EDIS Doc. ID 52315) (setting 264% bond rate); Certain Devices for Connecting Computers Via Telephone Lines, Inv. No. 337-TA-360, Comm’n Op. at 12, USITC Pub. No. 2843 (Dec. 1994) (EDIS Doc. ID 216950) (setting 346% bond rate); Certain Cube Puzzles, Inv. No. 337-TA-112, Comm’n Op. at 35, USITC Pub. 1334 (Jan. 1983) (EDIS Doc. ID 217890) (setting 600% bond rate). In appropriate circumstances, the Commission sets different bond rates for different respondents. See, e.g., Certain Foam Footwear, Inv. No. 337-TA-567, Comm’n Op. at 9 (Aug. 2, 2011) (EDIS Doc. ID 455852); Certain Coaxial Cable Connectors & Components Thereof & Prod. Containing Same, 337-TA-650, Comm’n Notice at 2 (Sept. 13, 2011) (EDIS Doc ID 459059). The Commission may also set different bond rates for different products of the same respondent. See Certain Magnetic Data Storage & Tape Cartridges Containing the Same (II), Inv. No. 337-TA-1076, Comm’n Op. at 67 (June 20, 2019) (EDIS Doc. ID 679042). Brother, AMI, Aster, and Globest stipulated to different bond rates for different Accused Products, as shown below, based on the calculated price differentials for those products. AMI Import. Stip., Ex. A; Aster Import. Stip., Ex. A; Globest Import. Stip., Ex. A. As these bond rates were calculated using reliable data and the parties agreed to the percentages, I PUBLIC VERSION
148 recommend entry of bond at the above-referenced bond rates. Given that the remaining respondents defaulted and failed to provide discovery into their pricing, a bond of 100% of the entered value of infringing toner cartridges and components thereof is appropriate. See, e.g., Video Game Sys., Comm’n Op. at 5. This amount should be enough to prevent any harm to Brother during the period of Presidential review. VIII. INITIAL DETERMINATION I hereby certify to the Commission this Initial Determination and the Recommended Determination. The Secretary shall serve the confidential version of this Initial Determination upon counsel who are signatories to the Protective Order (Order No. 1) issued in this investigation. A public version will be served at a later date upon all parties of record. Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R. § 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review of the Initial Determination or certain issues therein. Within seven days of the date of this document, the parties must jointly submit a statement to Cheney337@ustic.gov stating whether or not each seeks to have any portion of this document redacted from the public version. Should either or both parties seek to have any portion of this document redacted from the public version thereof, the parties shall attach a copy of a joint proposed public version of this document indicating with red brackets any portion asserted to contain confidential business information.38 To the extent possible, the proposed redactions 38 If the parties submit excessive redactions, they may be required to provide an additional written statement, supported by declarations from individuals with personal knowledge, PUBLIC VERSION
149 should be made electronically, in a PDF of the issued order, using the “Redact Tool” within Adobe Acrobat, wherein the proposed redactions are submitted as “marked” but not yet “applied.” The parties’ submission concerning the public version of this document should not be filed with the Commission Secretary. SO ORDERED. justifying each proposed redaction and specifically explaining why the information sought to be redacted meets the definition for confidential business information set forth in Commission Rule 201.6(a). 19 C.F.R. § 201.6(a). PUBLIC VERSION
CERTAIN TONER CARTRIDGES, COMPONENTS THEREOF, AND SYSTEMS CONTAINING SAME Inv. No. 337-TA-1174 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties as indicated, on August 10, 2020. Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436 On Behalf of Complainants Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc.: Lisa M. Kattan, Esq. BAKER BOTTS L.L.P. 700 K Street, NW Washington, DC 20001 Email: lisa.kattan@bakerbotts.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download On Behalf of Respondent Aster Graphics, Inc.: Barbara A. Murphy, Esq. FOSTER, MURPHY, ALTMAN & NICKEL, PC 1150 18th Street NW, Suite 775 Washington, DC 20036 Email: bmurphy@fostermurphy.com ☐ Via Hand Delivery ☐ Via Express Delivery ☐ Via First Class Mail ☒ Other: Email Notification of Availability for Download
OCR transcription for search; preserved printed pages are authoritative
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND SYSTEMS
CONTAINING SAME
Investigation No. 337-TA-1174
Publication 5303 March 2022
U.S. International Trade Commission
| ;
| : ange
7 CTT
Washington, DC 20436
U.S. International Trade Commission
COMMISSIONERS
Jason E. Kearns, Chair
Randolph J. Stayin, Vice Chair
David S. Johanson, Commissioner
Rhonda K. Schmidtlein, Commissioner
Amy A. Karpel, Commissioner
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436
U.S. International Trade Commission
Washington, DC 20436
www.usitc.gov
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND SYSTEMS
CONTAINING SAME
Investigation No. 337-TA-1174
Publication 5303 March2022
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
ISSUANCE OF A GENERAL EXCLUSION ORDER AND CEASE AND DESIST
ORDERS; TERMINATION OF INVESTIGATION
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
affirmed a summary determination of violation of section 337 and has determined to issue (1) a
general exclusion order (“GEO”) denying entry of certain toner cartridges, components thereof,
and systems containing same; and (2) cease and desist orders (“CDOs”) against 20 respondents
(listed below). The investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,
telephone (202) 205-3179. 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 EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its 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 September 23, 2019, the Commission instituted
this investigation based on a complaint filed by Brother Industries, Ltd. of Nagoya Japan;
Brother International Corp. (U.S.A.) of Bridgewater, New Jersey; and Brother Industries
(U.S.A.), Inc. of Bartlett, Tennessee (collectively, “Brother”). 84 FR 49762-63 (Sept. 23, 2019).
The complaint alleged violations of section 337 based on the importation into the United States,
the sale for importation, or the sale within the United States after importation of certain toner
cartridges, components thereof, and systems containing same by reason of infringement of
certain claims of U.S. Patent Nos. 9,568,856 (“the ’856 patent”); 9,575,460 (“the ’460 patent”);
9,632,456 (“the ’456 patent”); 9,785,093 (“the ’093 patent”); and 9,846,387 (“the ’387 patent”)
(collectively, “the Asserted Patents”). Id. The Commission’s notice of investigation named the
following 32 respondents: AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty
Limited of Kowloon, Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside,
California (“Aster”); Aztech Enterprises Limited of Kowloon, Hong Kong (“Aztech”);
2
Billiontree Technology USA Inc. of City of Industry, California (“Billiontree”); Carlos Imaging
Supplies, Inc. of Hacienda Heights, California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn,
New York (“Cartridge Evolution”); Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”);
Eco Imaging Inc. of Irvine, California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights,
California (“Ecoolsmart”); EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc.
of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”);
Greencycle Tech, Inc. of South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd.
of Kowloon, Hong Kong (“Hongkong Boze”); I8 International, Inc. of City of Industry,
California (“I8”); IFree E-Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E-
Commerce of Walnut, California (“Ikong”); Intercon International Corp. of Brea, California
(“Intercon”); IPrint Enterprise Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of
Long Beach, California (“LD Products”); Linkyo Corp. of La Puente, California (“Linkyo”);
Mangoket LLC of Alhambra, California (“Mangoket”); New Era Image LLC of Corona,
California (“New Era”); OW Supplies Corp. of Corona, California (“OW Supplies”); Solong E-
Commerce Co., LLC of Wan Chai, Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of
Wan Chai, Hong Kong (“Smartjet”); Super Warehouse Inc. of Blaine, Washington (“Super
Warehouse”); Theresa Meng of Brooklyn, New York (“Ms. Meng”); Triple Best LLC of San
Diego, California (“Triple Best”); V4ink, Inc. of Diamond Bar, California (“V4ink”); and Zhuhai
Xiaohui E-Commerce Co., Ltd. of Zhuhai, China (“Xiaohui”). Id. at 49762-63. The notice of
investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at
49763.
Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however, did
not oppose the summary determination motion of violation as to the accused products, even
though Aster’s products are subject to the motion. See Joint Stipulation of Brother and Aster for
Resolution as to Aster in the Investigation (Mar. 4, 2020). EPS and IFree were terminated from
the investigation based upon withdrawal of the complaint against them. See Order No. 32 (Jan.
28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020). Cartridge Evolution, E-Z Ink,
Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and V4ink were terminated from the
investigation based upon entry of consent orders. See Order No. 36 (Mar. 12, 2020), unreviewed
by Comm’n Notice (Mar. 31, 2020); Order No 38 (Mar. 12, 2020), unreviewed by Comm’n
Notice (Mar. 31, 2020); Order No. 37 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31,
2020); Order No. 10 (Oct. 18, 2019), unreviewed by Comm’n Notice (Nov. 6, 2019); Order No.
17 (Nov. 21, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 28 (Dec. 30,
2019), unreviewed by Comm’n Notice (Jan. 29, 2020); Order No. 18 (Nov. 27, 2019),
unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 33 (Fe. 3, 2020), unreviewed by
Comm’n Notice (Mar. 4, 2020). The following 21 respondents defaulted: AMI, Globest, An An
Beauty, Aztech, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree,
Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super
Warehouse, and LD Products (collectively, “Defaulting Respondents”). See Order No. 35 (Mar.
5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No. 31 (Jan. 22, 2020),
unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by
Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by Comm’n Notice
(Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020);
Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019).
3
On March 12, 2020, Brother filed a motion for summary determination of violation of
section 337 by Aster and the Defaulting Respondents and for a recommendation that the
Commission issue a GEO and CDOs. See Complainants’ Motion for Summary Determination of
Violation and for Recommended Determination on Remedy and Bonding. On March 23, 2020,
OUII filled a response in support of Brother’s motion. See Commission Investigative Staff’s
Response to Brother’s Motion for Summary Determination of Violation. No respondent filed a
response to Brother’s motion. Id.
On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial
determination (“ID”) (Order No. 40) granting Brother’s motion for summary determination on
violation of section 337 and issued a recommended determination (“RD”) on remedy and
bonding. The ID found that the Commission has subject matter jurisdiction over the
investigation. ID at 34. The ID further found that none of the respondents contest the
Commission’s personal jurisdiction over them or in rem jurisdiction as to the accused products.
ID at 34-35. The ID found that Brother: (1) established the importation requirement as to Aster
and Defaulting Respondents, ID at 36-79; (2) demonstrated that the accused products infringe the
asserted claims, id. at 118-133; and (3) demonstrated that the domestic industry (“DI”) products
practice at least one claim of each Asserted Patent and that a DI exists in the United States, id. at
84-118. The RD recommended issuance of a general exclusion order (“GEO”) (or, in the
alternative, a limited exclusion order directed to Aster and each of the Defaulting Respondents).
RD at 134-44. The RD further recommended issuance of cease and desist orders (“CDOs”)
directed to Aster and each defaulting respondent that has domestic operations. Id. at 144-46.
The RD also recommended setting different bond rates for entry of the different products
covered by the GEO during the period of Presidential review. Id. at 146-48 (recommended bond
rate table at 147). No one petitioned for review of the ID.
On August 24, 2020, Aster filed a public interest statement in response to the
Commission’s notice soliciting public interest comments pursuant to 19 CFR 210.50(a)(4)(i). In
its submission, Aster argued that any Commission remedial orders issued in this investigation
should not cover its new products pursuant to its stipulation with Brother. See Respondent Aster
Graphics, Inc.’s Statement of Public Interest. On August 26, 2020, Brother filed a response. See
Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for
Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond.
On September 8, 2020, the Commission determined not to review the ID and requested
written submissions on remedy, the public interest, and bonding. 85 FR 56628-31 (Sept. 14,
2020). The Commission rejected Aster’s August 24, 2020 public interest submission as
improper under 19 CFR 210.50(a)(4)(i). Id. at 56630. The Commission noted that while 19
CFR 210.50(a)(4)(i) provides that parties may file information with the Commission relating to
the public interest, Aster’s submission concerned the scope of the remedy and thus did not fall
within the ambit of the public interest submissions provided for under 19 CFR 210.50(a)(4)(i).
Id. The Commission stated that “Aster will have an opportunity to raise its arguments regarding
the scope of any remedial orders in a remedy submission before the Commission in response to
the instant notice, which invites parties to file submissions addressing remedy, bonding and the
public interest as noted below.” Id.
4
On September 22, 2020, Brother, Aster, and OUII filed initial submissions in response to
the Commission’s request. See Complainants’ Submission on Remedy, the Public Interest, and
Bonding; Respondent Aster Graphics, Inc.’s Submission on Remedy, the Public Interest and
Bonding; Response of the Office of Unfair Import Investigations to the Commission’s Request
for Written Submissions Regarding Remedy, the Public Interest, and Bonding. On September
29, 2020, the parties filed reply submissions. See Complainants’ Reply Submission on Remedy,
the Public Interest, and Bonding;1 Respondent Aster Graphics, Inc.’s Reply to the Submission of
the Office of Unfair Import Investigations and Complainants on Remedy, the Public Interest and
Bonding; Reply of the Office of Unfair Import Investigations to the Private Parties’ Written
Submissions Regarding Remedy, the Public Interest, and Bonding.
As noted above, the Commission affirmed the ID’s finding that there is a violation of
section 337 with respect to Aster and Defaulting Respondents. The Commission also finds that
the statutory requirements for issuance of a GEO under section 337(d)(2) are met. See 19 U.S.C.
1337(d)(2). The Commission further finds that issuance of CDOs against Aster and 19 of the
defaulting respondents (noted below) is appropriate under section 337(f)(1). See 19 U.S.C.
1337(f)(1). In addition, the Commission finds that the public interest factors do not preclude
issuance of the requested relief. See 19 U.S.C. 1337(d)(1), (f)(1).
The Commission therefore has determined that the appropriate remedy in this
investigation is: (1) a GEO prohibiting the unlicensed importation of certain toner cartridges,
components thereof, and systems containing same that infringe one or more of claims 1-5, 10,
and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of
the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the
’387 patent; and (2) CDOs directed to Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco
Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD
Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. The Commission has
also determined that the bond during the period of Presidential review shall be in the amount
of the following percentages of the entered value for respondents AMI, Aster, and Globest:
Infringing Products AMI Aster Globest
Accused 221/225 Products 568% 1463% 900%
Accused 223/227 Products 274% 336% 372%
Accused 420/450 Products - 623% 682%
Accused 630/660 Products 575% 886% 635%
Accused 730/760/770 Products 589% 354% 369%
The bond for all other infringing articles shall be in the amount of one hundred percent (100%)
of the entered value.
The Commission’s orders were delivered to the President and to the United States Trade
Representative on the day of their issuance. The investigation is terminated.
1 The Chair granted Brother’s motion for leave to file one day late. Brother filed on time but
inadvertently omitted to include the certificate of service. Brother corrected the omission the
next day.
5
While temporary remote operating procedures are in place in response to COVID-19, the
Office of the Secretary is not able to serve parties that have not retained counsel or otherwise
provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules
201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the
Complainant complete service for any party without a method of electronic service noted on the
attached Certificate of Service and shall file proof of service on the Electronic Document
Information System (EDIS).
The Commission vote for this determination took place on November 23, 2020.
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.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS
upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties
as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
GENERAL EXCLUSION ORDER
The United States International Trade Commission (“Commission”) has determined that
there is a violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in the
unlawful importation, sale for importation, or sale within the United States after importation of
certain toner cartridges, components thereof, and systems containing same (as defined in
paragraph 2 below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No.
9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460
patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9
of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent
No. 9,846,387 (“the ’387 patent”).
Having reviewed the record in this investigation, including the written submissions of the
parties, the Commission has made its determination on the issues of remedy, the public interest,
and bonding. The Commission has determined that a general exclusion from entry for
consumption is necessary (1) to prevent circumvention of an exclusion order limited to products
of named persons and (2) because there is a pattern of violation of Section 337 and it is difficult
to identify the source of the infringing products. Accordingly, the Commission has determined
2
to issue a general exclusion order prohibiting the unlicensed importation of infringing toner
cartridges, components thereof, and systems containing same.
The Commission has also determined that the public interest factors enumerated in 19
U.S.C. § 1337(d) do not preclude the issuance of the general exclusion order. The bond during
the period of Presidential review shall be in the amount of the following percentages of the
entered value for respondents AMI Brother, Inc. (“AMI”), Aster Graphics, Inc. (“Aster”), and
Globest Trading Inc. (“Globest”):
Infringing Products AMI Aster Globest
Accused 221/225 Products 568% 1463% 900%
Accused 223/227 Products 274% 336% 372%
Accused 420/450 Products - 623% 682%
Accused 630/660 Products 575% 886% 635%
Accused 730/760/770 Products 589% 354% 369%
The bond during the period of Presidential review shall be in the amount of one hundred (100%)
percent of the entered value for all other infringing articles subject to this Order.
Accordingly, the Commission hereby ORDERS that:
1. Toner cartridges, components thereof, and systems containing same (as defined in
paragraph 2 below) that infringe one or more of claims 1-5, 10, and 12-15 of the
’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the
’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and
18 of the ’387 patent are excluded from entry for consumption into the United
States, entry for consumption from a foreign trade zone, or withdrawal from a
warehouse for consumption, for the remaining terms of the patents, except under
license from, or with the permission of, the patent owner or as provided by law.
2. The toner cartridges, components thereof, and systems containing the same that
are subject to this Order (i.e., “covered articles”) are as follows: laser toner
3
cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”).
3. Notwithstanding paragraph 1 of this Order, covered articles are entitled to entry
into the United States for consumption, entry for consumption from a foreign-
trade zone, or withdrawal from a warehouse for consumption under bond in the
amount of the following percentages of the entered value for respondents AMI,
Aster, and Globest:
Infringing Products AMI Aster Globest
Accused 221/225
Products
568% 1463% 900%
Accused 223/227
Products
274% 336% 372%
Accused 420/450
Products
- 623% 682%
Accused 630/660
Products
575% 886% 635%
Accused 730/760/770
Products
589% 354% 369%
and in the amount of one hundred percent (100%) of the entered value for all
other covered articles, pursuant to subsection (j) of Section 337 (19 U.S.C.
§ 1337(j)) and the Presidential Memorandum for the United States Trade
Representative of July 21, 2005 (70 Fed. Reg. 43,251), from the day after this
Order is received by the United States Trade Representative until such time as the
United States Trade Representative notifies the Commission that this Order is
approved or disapproved but, in any event, not later than sixty (60) days after the
date of receipt of this Order. All entries of covered articles made pursuant to this
paragraph are to be reported to U.S. Customs and Border Protection (“CBP”), in
advance of the date of the entry, pursuant to procedures CBP establishes.
4
4. At the discretion of CBP and pursuant to the procedures it establishes, persons
seeking to import covered articles that are potentially subject to this Order may be
required to certify that they are familiar with the terms of this 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 paragraph 1 of this Order. At its discretion, CBP may require persons who
have provided the certification described in this paragraph to furnish such records
or analyses as are necessary to substantiate the certification.
5. In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not
apply to covered articles that are imported by and for the use of the United States,
or imported for, and to be used for, the United States with the authorization or
consent of the Government.
6. The Commission may modify this Order in accordance with the procedures
described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
7. The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for
electronic service and upon CBP. While temporary remote operating procedures
are in place in response to COVID-19, the Office of the Secretary is not able to
serve parties that have not retained counsel or otherwise provided a point of
contact for electronic service. Accordingly, pursuant to Commission Rule
201.16(a) and 210.7(a)(1) (19 C.F.R. §§ 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a
5
method of electronic service noted on the attached Certificate of Service and shall
file proof of service on the Electronic Document Information System (EDIS).
8. Notice of this Order shall be published in the Federal Register.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Greencycle Tech, Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Greencycle Tech, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 24, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Zhuhai Xiaohui E-Commerce Co., Ltd. cease
and desist from conducting any of the following activities in the United States: importing,
selling, offering for sale, marketing, advertising, distributing, transferring (except for
exportation), soliciting United States agents or distributors, and aiding or abetting other entities
in the importation, sale for importation, sale after importation, transfer (except for exportation),
or distribution of toner cartridges, components thereof, and systems containing same (as defined
in Definition (G) below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent
No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the
’460 patent”); claims 1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5,
and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S.
Patent No. 9,846,387 (“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Zhuhai Xiaohui E-Commerce Co., Ltd.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Super Warehouse Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Super Warehouse Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Solong E-Commerce Co., LLC cease and desist
from conducting any of the following activities in the United States: importing, selling, offering
for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting
United States agents or distributors, and aiding or abetting other entities in the importation, sale
for importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Solong E-Commerce Co., LLC.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Smartjet E-Commerce Co., LLC cease and desist
from conducting any of the following activities in the United States: importing, selling, offering
for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting
United States agents or distributors, and aiding or abetting other entities in the importation, sale
for importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Smartjet E-Commerce Co., LLC.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Mangoket LLC cease and desist from conducting
any of the following activities in the United States: importing, selling, offering for sale,
marketing, advertising, distributing, transferring (except for exportation), soliciting United States
agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Mangoket LLC.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT LD Products, Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean LD Products, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT IPrint Enterprise Limited cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean IPrint Enterprise Limited.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Intercon International Corp. cease and desist
from conducting any of the following activities in the United States: importing, selling, offering
for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting
United States agents or distributors, and aiding or abetting other entities in the importation, sale
for importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Intercon International Corp.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Ikong E-Commerce cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Ikong E-Commerce.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT I8 International, Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean I8 International, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Hongkong Boze Co., Ltd. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Hongkong Boze Co., Ltd.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Globest Trading Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Globest Trading Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 900 percent of entered value for infringing 221/225 Products, 372
percent of entered value for infringing 223/227 Products, 682 percent of entered value for
infringing 420/450 Products, 635 percent of entered value for infringing 630/660 Products, and
369 percent of entered value for infringing 730/760/770 Products. This bond provision does not
apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
8
imported on or after the date of issuance of this Order are subject to the entry bond as set forth in
the exclusion order issued by the Commission, and are not subject to this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
2 See Footnote 1.
9
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Eco Imaging Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Eco Imaging Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Ecoolsmart Co. cease and desist from conducting
any of the following activities in the United States: importing, selling, offering for sale,
marketing, advertising, distributing, transferring (except for exportation), soliciting United States
agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Ecoolsmart Co.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Do it Wiser, LLC cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Do it Wiser, LLC.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Carlos Imaging Supplies, Inc. cease and desist
from conducting any of the following activities in the United States: importing, selling, offering
for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting
United States agents or distributors, and aiding or abetting other entities in the importation, sale
for importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Carlos Imaging Supplies, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Billiontree Technology USA Inc. cease and desist
from conducting any of the following activities in the United States: importing, selling, offering
for sale, marketing, advertising, distributing, transferring (except for exportation), soliciting
United States agents or distributors, and aiding or abetting other entities in the importation, sale
for importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Billiontree Technology USA Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 100 percent of the entered value of the covered products. This bond
provision does not apply to conduct that is otherwise permitted by Section IV of this Order.
Covered products imported on or after the date of issuance of this Order are subject to the entry
bond as set forth in the exclusion order issued by the Commission, and are not subject to this
bond provision.
8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
2 See Footnote 1.
9
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT AMI Brothers, Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean AMI Brothers, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 568 percent of entered value for infringing 221/225 Products, 274
percent of entered value for infringing 223/227 Products, 575 percent of entered value for
infringing 630/660 Products, and 589 percent of entered value for infringing 730/760/770
Products. This bond provision does not apply to conduct that is otherwise permitted by Section
IV of this Order. Covered products imported on or after the date of issuance of this Order are
8
subject to the entry bond as set forth in the exclusion order issued by the Commission, and are
not subject to this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
2 See Footnote 1.
9
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Aster Graphics, Inc. cease and desist from
conducting any of the following activities in the United States: importing, selling, offering for
sale, marketing, advertising, distributing, transferring (except for exportation), soliciting United
States agents or distributors, and aiding or abetting other entities in the importation, sale for
importation, sale after importation, transfer (except for exportation), or distribution of toner
cartridges, components thereof, and systems containing same (as defined in Definition (G)
below) that infringe one or more of claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the
’093 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims
1-7, and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. Patent
No. 9,632,456 (“the ’456 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387
(“the ’387 patent”) (collectively, “the Asserted Patents”) in violation of section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. § 1337).
I.
Definitions
As used in this order:
(A) “Commission” shall mean the United States International Trade Commission.
2
(B) “Complainants” shall mean Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc.
(C) “Respondent” shall mean Aster Graphics, Inc.
(D) “Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or
its majority-owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and
Puerto Rico.
(F) The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) The term “covered products” shall mean toner cartridges, components thereof,
and systems containing same that infringe one or more of claims 1-5, 10, and 12-
15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7,
and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3,
5, 7-12, and 18 of the ’387 patent. The toner cartridges, components thereof, and
systems containing the same that are subject to this Order are as follows: laser
toner cartridges designed for use with Brother printers, fax machines, and MFCs
(“Multi-Function Centers”). Covered products shall not include articles for which
a provision of law or license avoids liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
3
assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section III,
infra, for, with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining terms of the Asserted Patents, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, offer for sale, sell, or otherwise transfer (except for
exportation) in the United States imported covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) in a written instrument, the owner of the Asserted Patents licenses or authorizes
such specific conduct; or
(B) such specific conduct is related to the importation or sale of covered products by
or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
4
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above. The Commission’s paper filing
requirements in 19 C.F.R. § 210.4(f) are currently waived. 85 Fed. Reg. 15798 (March 19,
2020). Submissions should refer to the investigation number (“Inv. No. 337-TA-1174”) in a
prominent place on the cover pages and/or the first page. See Handbook for Electronic Filing
Procedures,
http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
Persons with questions regarding filing should contact the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Complainant’s counsel.1
1 Complainants must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must be on the
protective order entered in the investigation.
5
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall retain
any and all records relating to the sale, offer for sale, marketing, or distribution in
the United States of covered products, made and received in the usual and
ordinary course of business, whether in detail or in summary form, for a period of
three (3) years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order and for
no other purpose, subject to any privilege recognized by the federal courts of the
United States, and upon reasonable written notice by the Commission or its staff,
duly authorized representatives of the Commission shall be permitted access and
the right to inspect and copy, in Respondent’s principal offices during office
hours, and in the presence of counsel or other representatives if Respondent so
chooses, all books, ledgers, accounts, correspondence, memoranda, and other
records and documents, in detail and in summary form, that must be retained
under subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
6
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy of this
Order upon each of its respective officers, directors, managing agents, agents, and
employees who have any responsibility for the importation, marketing,
distribution, or sale of imported covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred to in
subparagraph VII(A) of this order, a copy of the Order upon each successor; and
(C) Maintain such records as will show the name, title, and address of each person
upon whom the Order has been served, as described in subparagraphs VII(A) and
VII(B) of this order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of 1463 percent of entered value for infringing 221/225 Products, 336
percent of entered value for infringing 223/227 Products, 623 percent of entered value for
infringing 420/450 Products, 886 percent of entered value for infringing 630/660 Products, and
354 percent of entered value for infringing 730/760/770 Products. This bond provision does not
apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
8
imported on or after the date of issuance of this Order are subject to the entry bond as set forth in
the exclusion order issued by the Commission, and are not subject to this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by Section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
This bond is to be released in the event (i) the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
the Federal Circuit, in a final judgment, reverses any Commission final determination and order
as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
bond and provides certification to that effect that is satisfactory to the Commission, upon service
2 See Footnote 1.
9
on Respondent of an order issued by the Commission based upon application therefor made by
Respondent to the Commission.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 23, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on November 23, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
COMMISSION OPINION
The Commission has determined that there has been a violation of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), with respect to claims 1-7 and
9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No.
9,575,460 (“the ’460 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456
patent”); claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); and claims
1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”) by 21 defaulting
respondents and one participating respondent. The Commission has determined that the
appropriate form of relief is (1) a general exclusion order (“GEO”) prohibiting the unlicensed
importation of certain toner cartridges, components thereof, and systems containing same that
infringe the asserted claims and (2) cease and desist orders (“CDOs”) directed to 20 respondents
(listed below). The Commission finds that the public interest factors do not preclude the
issuance of the remedial orders. Finally, the Commission has determined to set the bond during
the period of Presidential review at varying percentages of the entered value of the subject
articles as discussed herein. This opinion sets forth the Commission’s reasoning in support of its
determinations as to remedy, bonding, and the public interest.
2
I. BACKGROUND
A. Procedural History
On September 23, 2019, the Commission instituted this investigation based on a
complaint filed by Brother Industries, Ltd. of Nagoya Japan; Brother International Corp.
(U.S.A.) of Bridgewater, New Jersey; and Brother Industries (U.S.A.), Inc. of Bartlett, Tennessee
(collectively, “Brother”). 84 Fed. Reg. 49762-63 (Sept. 23, 2019). The complaint alleged
violations of section 337 based on the importation into the United States, the sale for
importation, or the sale within the United States after importation of certain toner cartridges,
components thereof, and systems containing same by reason of infringement of claims 1-7 and 9
of the ’856 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1, 4, 5, and 9 of the ’456
patent; claims 1-5, 10, and 12-15 of the ’093 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387
patent. Id. The Commission’s notice of investigation named the following 32 respondents:
AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty Limited of Kowloon,
Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside, California (“Aster”); Aztech
Enterprises Limited of Kowloon, Hong Kong (“Aztech”); Billiontree Technology USA Inc. of
City of Industry, California (“Billiontree”); Carlos Imaging Supplies, Inc. of Hacienda Heights,
California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”);
Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”); Eco Imaging Inc. of Irvine,
California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights, California (“Ecoolsmart”);
EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc. of Brooklyn, New York
(“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Greencycle Tech, Inc. of
South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd. of Kowloon, Hong Kong
(“Hongkong Boze”); I8 International, Inc. of City of Industry, California (“I8”); IFree E-
Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E-Commerce of Walnut, California
3
(“Ikong”); Intercon International Corp. of Brea, California (“Intercon”); IPrint Enterprise
Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of Long Beach, California (“LD
Products”); Linkyo Corp. of La Puente, California (“Linkyo”); Mangoket LLC of Alhambra,
California (“Mangoket”); New Era Image LLC of Corona, California (“New Era”); OW Supplies
Corp. of Corona, California (“OW Supplies”); Solong E-Commerce Co., LLC of Wan Chai,
Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of Wan Chai, Hong Kong (“Smartjet”);
Super Warehouse Inc. of Blaine, Washington (“Super Warehouse”); Theresa Meng of Brooklyn,
New York (“Ms. Meng”); Triple Best LLC of San Diego, California (“Triple Best”); V4ink, Inc.
of Diamond Bar, California (“V4ink”); and Zhuhai Xiaohui E-Commerce Co., Ltd. of Zhuhai,
China (“Xiaohui”). Id. at 49762-63. The notice of investigation also names the Office of Unfair
Import Investigations (“OUII”) as a party. Id. at 49763.
Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however, did
not oppose Brother’s summary determination motion of a Section 337 violation as to the accused
products, even though Aster’s products are subject to the motion.1 EPS and IFree were
terminated from the investigation based upon withdrawal of the complaint against them.2
Cartridge Evolution, E-Z Ink, Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and
V4ink were terminated from the investigation based upon entry of consent orders.3 The
1 See Joint Stipulation of Brother and Aster for Resolution as to Aster in the Investigation (Mar.
4, 2020).
2 See Order No. 32 (Jan. 28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020).
3 See Order No. 36 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No
38 (Mar. 12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 37 (Mar. 12,
2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 10 (Oct. 18, 2019),
unreviewed by Comm’n Notice (Nov. 6, 2019); Order No. 17 (Nov. 21, 2019), unreviewed by
Comm’n Notice (Dec. 18, 2019); Order No. 28 (Dec. 30, 2019), unreviewed by Comm’n Notice
(Jan. 29, 2020); Order No. 18 (Nov. 27, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019);
Order No. 33 (Feb. 3, 2020), unreviewed by Comm’n Notice (Mar. 4, 2020).
4
following 21 respondents defaulted: AMI, Globest, An An Beauty, Aztech, Xiaohui, Ecoolsmart,
Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos Imaging, Eco Imaging,
Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse, and LD Products
(collectively, “Defaulting Respondents”).4
On March 12, 2020, Brother filed a motion for summary determination of violation of
section 337 by Aster and the Defaulting Respondents and for a recommendation that the
Commission issue a general exclusion order and cease and desist orders.5 On March 23, 2020,
OUII filed a response in support of Brother’s motion.6 No respondent filed a response to
Brother’s motion.
On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial
determination (“ID”) (Order No. 40), granting Brother’s motion for summary determination of a
violation of section 337 by Aster and the Defaulting Respondents. The ID found that the
Commission has subject matter jurisdiction over the investigation. ID at 34. The ID further
found that none of the respondents contest the Commission’s personal jurisdiction over them or
in rem jurisdiction as to the accused products. ID at 34-35. The ID found that Brother:
(1) established the importation requirement as to Aster and the Defaulting Respondents, ID at
36-79; (2) demonstrated that the accused products practice the asserted claims, id. at 118-133;
4 See Order No. 35 (Mar. 5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No.
31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20,
2019), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed
by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n
Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7,
2019).
5 See Complainants’ Motion for Summary Determination of Violation and for Recommended
Determination on Remedy and Bonding (“Brother Motion”).
6 See Commission Investigative Staff’s Response to Brother’s Motion for Summary
Determination of Violation (“OUII Response”).
5
(3) demonstrated that the domestic industry (“DI”) products practice at least one claim of each
asserted patent; and (4) that a DI exists in the United States, id. at 84-118. The ALJ’s
Recommended Determination (“RD”) on remedy and bonding recommended issuance of a GEO
(or, in the alternative, a limited exclusion order (“LEO”) directed to Aster and each of the
Defaulting Respondents). Id. at 134-44. The RD further recommended issuing CDOs directed
to Aster and each defaulting respondent that has domestic operations. Id. at 144-46. The RD
also recommended setting different bond rates for entry of the different products covered by the
GEO during the period of Presidential review, based on stipulations between Brother and certain
respondents. Id. at 146-48 (recommended bond rate table at 147 of the ID). No one petitioned
for review of the ID.
On September 8, 2020, the Commission determined not to review the ID and requested
written submissions on remedy, the public interest, and bonding. 85 Fed. Reg. 56628-31 (Sept.
14, 2020).
On August 24, 2020, Aster filed a public interest statement in response to the
Commission’s notice soliciting public interest comments pursuant to 19 C.F.R. § 210.50(a)(4)(i).
In its submission, Aster argued that any Commission remedial orders issued in this investigation
should not cover its new products pursuant to its stipulation with Brother.7 On August 26, 2020,
Brother filed a response.8 The Commission rejected Aster’s August 24, 2020 public interest
submission as improper under 19 C.F.R. § 210.50(a)(4)(i). Id. at 56630. The Commission noted
that while 19 C.F.R. § 210.50(a)(4)(i) provides that parties may file information with the
Commission relating to the public interest, Aster’s submission concerned the scope of the
7 See Respondent Aster Graphics, Inc.’s Statement of Public Interest.
8 See Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for
Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond.
6
remedy and thus did not fall within the ambit of the public interest submissions provided for
under 19 C.F.R. § 210.50(a)(4)(i). Id. The Commission stated that “Aster will have an
opportunity to raise its arguments regarding the scope of any remedial orders in a remedy
submission before the Commission in response to the instant notice, which invites parties to file
submissions addressing remedy, bonding and the public interest as noted below.” Id.
On September 22, 2020, Brother, Aster, and OUII filed initial submissions in response to
the Commission’s request.9 On September 29, 2020, the parties filed reply submissions.10
B. The Asserted Patents
The technology at issue is laser toner cartridges designed for use with Brother printers,
fax machines, and Multi-Function Centers (“MFCs”).11 Printers, fax machines, and MFCs use
toner cartridges to print images on paper or other such materials. ID at 17. Toner is transferred
from the toner cartridge to paper through a system of electrically charged components. Id. A
toner cartridge generally includes a toner hopper, an agitator, a developing chamber, a supply
roller, and a developing roller. Id. at 18. Toner is stored in the toner hopper and moved to the
supply roller when the agitator rotates. Id. The supply roller and the developing roller include
electrodes that charge the toner with a positive electrostatic charge. Id. The charged toner is
9 See Complainants’ Submission on Remedy, the Public Interest, and Bonding (“Brother Sub.”);
Respondent Aster Graphics, Inc.’s Submission on Remedy, the Public Interest and Bonding
(“Aster Sub.”); Response of the Office of Unfair Import Investigations to the Commission’s
Request for Written Submissions Regarding Remedy, the Public Interest, and Bonding (“OUII
Sub.”).
10 See Respondent Aster Graphics, Inc.’s Reply to the Submission of the Office of Unfair Import
Investigations and Complainants on Remedy, the Public Interest and Bonding (“Aster Rep.”);
Reply of the Office of Unfair Import Investigations to the Private Parties’ Written Submissions
Regarding Remedy, the Public Interest, and Bonding (“OUII Rep.”); Complainants’ Reply
Submission on Remedy, the Public Interest, and Bonding (“Brother Rep.”). The Chair granted
Brother’s motion for leave to file its reply one day late. Brother filed on time but inadvertently
omitted to include the certificate of service. Brother corrected the omission the next day.
11 MFCs are printer/copier/scanner/fax combinations.
7
deposited in the desired pattern on a photosensitive drum, where it is then transferred onto paper.
Id.
The Asserted Patents are directed to toner cartridges with certain features, including a
detection gear (shown below), a supply roller electrode, and a developing roller electrode. ID at
20. The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a
detection gear, while the asserted claims of the ’456 and ’856 patents are directed to various
aspects of the supply roller electrode and developing roller electrode (shown below). Id.
8
The ’093 patent, entitled “Developing Cartridge Including Developing Roller Having
Developing Roller Shaft,” issued on October 10, 2019. The patent generally relates to a
developing cartridge that is reduced in size and can be prevented from being damaged. ’093
patent, col. 1, ll. 50-52. Brother asserts claims 1-5, 10, and 12-15.
The ’460 patent entitled “Developer Cartridge Having Developing Roller and Electrode,”
issued on February 21, 2017. The patent generally relates to a developer cartridge “whose
information can be detected with a simpler configuration.” ’460 patent, col. 1, ll. 51-53. Brother
asserts claims 1, 7-11, 15, and 16.
The ’387 patent entitled “Developing Cartridge Having Coupling and Developing
Roller,” issued on December 19, 2017. The patent generally relates to a smaller developing
cartridge that has a cartridge frame, a driving unit, and an electric-power supplying unit. ’387
patent, col. 6, ll. 30-35. Brother asserts claims 1, 3, 5, 7-12, and 18.
The ’456 patent entitled “Developing Cartridge,” issued on April 25, 2017. The patent
generally relates to a thin developing cartridge that provides individual electrodes to a
developing roller and a supply roller. ’456 patent, col. 2, ll.13-15. Brother asserts claims 1-7
and 9.
9
The ’856 patent entitled “Developing Cartridge,” issued on February 14, 2017. The
patent generally relates to a thin developing cartridge that provides individual electrodes to a
developing roller and a supply roller. ’856 patent col. 2, ll. 13-15. Brother asserts claims 1, 4, 5,
and 9.
C. Products at Issue
1. The Domestic Industry Products
According to Brother, it offers five lines of toner cartridges for sale in the United States
that utilize the technology of the asserted patents: the “DCL,” “ECL,” “BLL,” “DLL,” and
“ELL” lines (collectively the “Covered Cartridges”). ID at 21 (citing Cummins Decl. ¶¶ 81-
106). The ALJ observed that the toner cartridges in Brother’s DCL line can be identified by
model numbers TN-221BK, TN-221C, TN-221M, TN- 221Y, TN-225C, TN-225M, and TN-
225Y (collectively, the “Covered 221/225 Cartridges”). Id. The toner cartridges in Brother’s
ECL line can be identified by model numbers TN-223BK, TN-223C, TN-223M, TN-223Y, TN-
227BK, TN-227C, TN-227M, TN-227Y (collectively, the “Covered 223/227 Cartridges”). Id.
The toner cartridges in Brother’s BLL line can be identified by model numbers TN-420 and TN-
450 (collectively, the “Covered 420/450 Cartridges”). Id. The toner cartridges in Brother’s DLL
line can be identified by model numbers TN-630 and TN-660 (collectively, the “Covered
630/660 Cartridges”). Id. Finally, toner cartridges in Brother’s ELL line can be identified by
model numbers TN-730, TN-760, and TN-770 (collectively, the “Covered 730/760/770
Cartridges”). Id. The ALJ noted that “[w]ithin each product line, Brother’s toner cartridges are
identical to each other in all respects relevant to this investigation.” Id. at 22. The ALJ further
noted that “[t]he primary difference between the toner cartridges in the DCL and ECL lines is
that the model numbers with ‘BK,’ ‘C,’ ‘M,’ and ‘Y’ suffixes hold black, cyan, magenta, and
yellow toner, respectively, and the toner cartridges with higher model numbers (e.g., TN-225C)
10
are filled with more toner than those with lower model numbers (e.g., TN-221C)” and “[t]he
toner cartridges with higher model numbers in the BLL, DLL, and ELL lines also are filled with
more toner than those with lower model numbers,” but that “all model numbers within the BLL,
DLL, and ELL lines are filled with black toner.” Brother’s DCL, ECL, BLL, DLL, and ELL
product lines also include compatible printers, fax machines, and MFCs with corresponding
model numbers (“Related Products”). Id.
2. The Infringing Products
The infringing products are toner cartridges designed to be compatible with Brother’s
printers, fax machines, and MFCs in the DCL, ECL, BLL, DLL, and ECL product lines. The
Commission found that the Accused 221/225 and 223/225 Cartridges infringe at least claims 1-5,
10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; and claims 1, 3, 5,
7-12, and 18 of the ’387 patent. ID at 123-26. The Commission found that the Accused 420/450
and 630/660 Cartridges infringe at least claims 1-7 and 9 of the ’456 patent; and claims 1, 4, 5,
and 9 of the ’856 patent. Id. at 126-31. The Commission found that the Accused 730/760/770
Cartridges infringe at least claims 1-7 and 9 of the ’456 patent; claims 1, 4, 5, and 9 of the ’856
patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 131-33
The Commission found that the TN-225 model is representative of the TN-221 model
and that the TN-227 model is representative of the TN-223 model. Based on this, Brother’s
expert, Jarrett Gayne, identified the Accused Group 1 Products by TN-225 and TN-227
compatible brands, as shown below:
11
ID at 25-26. Similarly, the Commission found that the TN-450 model is representative of the
TN-420 model, the TN-660 model is representative of the TN-630 model, and the TN-760 model
is representative of the TN-730 and TN-770 models. Based on this, Brother’s expert, Dr. Grune,
identified the Accused Group 2 Products by TN-450, TN-660, and TN-760 compatible brands, as
shown below:
12
ID at 27-28. Brother’s expert, Jarrett Gayne, grouped TN-225, TN-227, and TN-760 compatible
brands into Accused Group 3 Products as shown below:
13
The evidence supporting the Commission’s infringement findings is set forth in the ID at
118-33.
II. REMEDY
In section 337 proceedings, the Commission has “broad discretion in selecting the form,
scope, and extent of the remedy.” See Viscofan, S.A. v. United States Int ’l Trade Comm ’n, 787
F.2d 544, 548 (Fed. Cir. 1986). Where a violation is found, the Commission generally issues a
limited exclusion order directed to products imported by persons found in violation of the statute.
In certain circumstances, however, the Commission may issue a GEO directed to all infringing
products. See 19 U.S.C. § 1337(d)(2). In conjunction with (or in lieu of) an exclusion order, the
14
Commission may also issue orders directing persons found in violation of section 337 “to cease
and desist from engaging in the unfair methods or acts involved.” 19 U.S.C. § 1337(f).
A. General Exclusion Order
Under section 337(d)(2), the Commission may issue a GEO barring the entry of
infringing goods, regardless of the source, if the Commission determines that either of the
following requirements is met:
(A) a general exclusion from entry of articles is necessary to prevent circumvention of an
exclusion order limited to products of named persons; or
(B) there is a pattern of violation of this section and it is difficult to identify the source of
infringing products.
19 U.S.C. § 1337(d)(2); Certain Cigarettes and Packaging Thereof, Inv. No. 337-TA-643,
Comm’n Op. at 24 (Oct. 1, 2009). In evaluating whether either criterion is satisfied, the
Commission may look not only to the activities of active respondents, but also to those of non-
respondents as well as respondents who have defaulted or been terminated from the
investigation. Certain Elec. Paper Towel Dispensing Devices and Components Thereof (“Towel
Dispensers”), Inv. No. 337-TA-718, Comm’n Op. at 16 (Jan. 20, 2012).
The ALJ recommended that the Commission issue a GEO under both 19 U.S.C.
§§ 1337(d)(2)(A) and (B). RD at 135-43. According to the ALJ, “[t]he undisputed record in this
investigation closely tracks the facts of prior Commission investigations into the same industry”
in which the Commission issued GEOs. Id.; see, e.g., Certain Toner Cartridges, and
Components Thereof (“Toner Cartridges IV”), Inv. No. 337-TA-918, Comm’n Op. at 6 (Oct. 1,
2015).
The RD found that the criteria for obtaining a GEO under section 337(d)(2)(A) are
satisfied. The RD stated that “[a]s in prior investigations in this industry, such as Toner
15
Cartridges IV, Inv. No. 337-TA-918, Comm’n Op. at 7 (Oct. 1, 2015), several of the
Respondents here sell Accused Products under multiple names on Amazon.com” and that “[i]f
limited exclusion orders were directed to the entities named as Respondents in this investigation,
it is likely that the same entities would continue online sales and importation using different
names.” RD at 137 (citing Ex. 5 at ¶¶ 3.34, 3.39, 3.53, 3.62, 3.69, 3.78, 3.148; Exs. 5-36, 5-41,
5-66, 5-77, 5-87, 5-99, 5-186 (examples of Amazon storefronts of respondents); Globest Import.
Stip. at ¶¶ 6, 7 (Globest admission of importation through Amazon.com)).
Likewise, the RD found that the criteria for obtaining a GEO under section 337(d)(2)(B)
were satisfied. According to the RD, “there are numerous ‘reseller’ customers in the business of
distributing infringing toner cartridges in the United States” and that “[n]on-party [[ ]]
[manufacturer of accused products] [[
]]
Id. (citing Ex. 59 ([[ ]]), at 1, 3, 4, 6). The RD further noted that “Print-Rite,
another non-party supplier, identifies nineteen customers of Accused Products in the United
States, including Respondents Do It Wiser, LD Products, Linkyo, and V4ink” and that “Aster
acknowledges that it supplies Accused Products to at least eight of the Defaulting Respondents—
An An Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket.” Id.
(citing Ex. 57 at ¶ 6 (Jan. 17, 2020); Ex. 38, Response of Aster Graphics, Inc. to Complaint and
Notice of Investigation at ¶ 3.26 (Oct. 18, 2019)). The RD concluded that “[t]his multiplicity of
suppliers and distributors of infringing toner cartridges qualitatively demonstrates a widespread
pattern of violation.” ID at 141.
Alternatively, the RD stated that “[s]hould the Commission find a violation and
determine not to issue a general exclusion order, I recommend that the Commission issue limited
16
exclusion orders directed to respondents Aster, An An Beauty, AMI, Aztech, Billiontree, Carlos
Imaging, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, Hongkong Boze, I8,
Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and
Xiaohui.” Id. at 144. According to the RD, “[t]he undisputed evidence supports a determination
that Respondents have violated section 337, so the condition precedent for limited exclusion
orders has been satisfied.” Id.
The Commission agrees with the ALJ that the requirements of section 337(d)(2) are met
(as explained below), warranting the issuance of a GEO in this investigation. Accordingly, the
Commission has determined to issue a GEO prohibiting the unlicensed importation from any
source of certain toner cartridges, components thereof, and systems containing same that infringe
one or more of the asserted claims.
1. A GEO Is Necessary to Prevent Circumvention of a Limited Exclusion
Order
Under section 337(d)(2)(A), the Commission considers whether “conditions are ripe for
circumvention of a limited exclusion order.” Towel Dispensers, Comm’n Op. at 16. In
determining whether conditions are ripe for circumvention, the Commission has considered
whether it is difficult to identify sellers or manufacturers, whether previous attempts to address
infringement have been unsuccessful, and whether infringing operations could be easily
replicated. See, e.g., Toner Cartridges IV, Comm’n Op. at 6; Certain Pocket Lighters, 337-TA-
1142, ID at 40-43 (Feb. 12, 2020). We agree with the ALJ that “based on the record evidence of
the past and present business practices of the Respondents that a limited exclusion order would
be easily circumvented” and therefore that a GEO is necessary. RD at 139.
Specifically, as the ALJ found, the evidence shows that foreign aftermarket toner
cartridge manufacturers, such as Aster’s parent company, have the capacity to replicate their
17
operations to appear as a new business within a few months. ID at 136-37. The ALJ further
found that the parent company of Aster was set up by a management company that entered into a
consent order stipulation in investigation number 337-TA-731 and was mass producing
infringing toner cartridges within a month. ID at 136; see also Certain Toner Cartridges and
Components Thereof, Inv. No. 337-TA-829, Order No. 25, ID at 120 (Feb. 28, 2013) (“Toner
Cartridges”). The ALJ concluded that this shows that the same scenario involving toner
cartridges could repeat itself if the Commission does not issue a GEO. RD at 136-37. The ALJ
surmised that “[a]s in prior investigations in this industry, such as Toner Cartridges IV, Inv. No.
337-TA-918, Comm’n Op. at 7, several of the Respondents here sell Accused Products under
multiple names on Amazon.com” and that “[i]f limited exclusion orders were directed to the
entities named as Respondents in this investigation, it is likely that the same entities would
continue online sales and importation using different names.” RD at 137 (citing Ex. 5 at ¶¶ 3.34,
3.39, 3.53, 3.62, 3.69, 3.78, 3.148; Exs. 5-36, 5-41, 5-66, 5-77, 5-87, 5-99, 5-186 (examples of
Amazon storefronts of respondents); Globest Import. Stip. at ¶¶ 6, 7 (Globest admission of
importation through Amazon.com)). This evidence is undisputed.
2. A GEO Is Warranted Based on a Pattern of Violation and Difficulty
Identifying Sources of Infringing Products
Section 337(d)(2)(B) permits the issuance of a general exclusion order where there is a
pattern of violation of section 337 and it is difficult to identify the source of the infringing goods.
As the ALJ found, Brother “established by substantial, reliable, and probative evidence a pattern
of violation of section 337 by sources that are difficult to identify.” RD at 143. The evidence
shows that there are numerous suppliers and distributors of infringing toner cartridges in addition
to the Respondents, including, for example, numerous “reseller” customers that distribute
18
infringing toner cartridges to potentially hundreds of customers in the United States. RD at 140-
41. For example, “[n]on-party [[
]] RD at 141 (citing Ex. 59 ([[ ]]), at 1, 3, 4, 6). “Print-Rite, another
non-party supplier, identifies nineteen customers of Accused Products in the United States,
including Respondents Do It Wiser, LD Products, Linkyo, and V4ink” and “Aster acknowledges
that it supplies Accused Products to at least eight of the Defaulting Respondents—An An
Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon, IPrint, and Mangoket.” Id. (citing
Ex. 57 at ¶ 6 (Jan. 17, 2020); Ex. 38, Response of Aster Graphics, Inc. to Complaint and Notice
of Investigation at ¶ 3.26 (Oct. 18, 2019)). We agree with the RD’s conclusion that “[t]his
multiplicity of suppliers and distributors of infringing toner cartridges qualitatively demonstrates
a widespread pattern of violation.” RD at 141.
In addition, the evidence shows that the sources of infringing products are difficult to
identify. RD at 141. As the ALJ found, Aster provides private labelling and custom packaging
to its customers, which, while a legitimate practice, obscures the identity of the original
manufacturer. Id. The evidence further shows that “respondents An An Beauty, Aztech,
Billiontree, Eco Imaging, Globest, Hongkong Boze, I8, IPrint, and Super Warehouse each
package their Accused Products in generic boxes marked only as ‘toner,’ ‘toner cartridge,’
‘premium toner cartridge,’ ‘laser toner cartridge,’ or ‘laser printer toner cartridge,’ omitting any
identifiable branding tying their products to their origins.” Id. at 141-42. The ALJ further found
that the “channels of commerce Respondents use also help conceal the identity of infringers,” as
shown by their use of popular e-commerce sites like Amazon.com, eBay.com, and Alibaba.com.
Id. at 142. The record shows that Respondents AMI, Do It Wiser, Eco Imaging, Ecoolsmart,
19
Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, Mangoket, Solong, Smartjet,
SuperWarehouse, and Xiaohui all shipped Accused Products through an Amazon fulfillment
center, with only the address of the fulfillment center appearing on the shipping materials. Id.
Nothing in the record contradicts any of this evidence. The record evidence thus establishes that
issuance of a GEO is warranted.
B. Cease and Desist Orders
In conjunction with (or in lieu of) an exclusion order, the Commission may also issue
orders directing persons found in violation of section 337 “to cease and desist from engaging in
the unfair methods or acts involved.” 19 U.S.C. § 1337(f). The Commission generally issues a
CDO when the evidence shows that the respondent maintains “commercially significant”
inventory of imported infringing products for that respondent in the United States or has
significant domestic operations that could undercut the remedy provided by an exclusion order.
See, e.g., Certain Elec. Skin Care Devices, Brushes & Chargers Therefor, & Kits Containing the
Same, Inv. No. 337-TA-959, Comm’n Op., 2017 WL 8683854, *16 (Feb. 13, 2017).
The RD recommended that the Commission grant Brother’s request to issue cease and
desist orders against respondents with addresses or operations based in the United States, namely
Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart, Globest,
Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, Smartjet,
Solong, Super Warehouse, and Xiaohui. RD at 144. The RD noted that the record shows that
Aster maintains commercially significant inventory in the United States. RD at 145 (citing Aster
Stipulation at Ex. A, shown below).
20
Accused Aster Product Domestic Inventory
221/225 [[ ]]
223/227 [[ ]]
420/450 [[ ]]
630/660 [[ ]]
730/760/770 [[ ]]
The RD stated that “Brother adduced substantial, undisputed evidence” that “respondents
AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolsmart. Globest, Greencycle,
I8, Ikong, Intercon, IPrint, LD Products, Mangoket, and Super Warehouse “each operates from
addresses in the United States.” Id. Because they have all defaulted, “the commercial
significance of their inventories may be inferred, and a cease and desist order is appropriate.” Id.
(citing Certain Arrowheads with Deploying Blades & Components Thereof & Packaging
Therefor, Inv. No. 337-TA-977, Comm’n Op. at 18 (Apr. 6, 2017).
Moreover, Brother adduced substantial, undisputed evidence that U.S. based respondents
AMI, Do It Wiser, Eco Imaging, Ecoolsmart, Globest, Greencycle, 18, Ikong, Inercon, IPrint,
Mangoket, and Super Warehouse as well as foreign respondents Hongkong Boze, Solong,
Smartjet, and Xiaohui “each fulfills orders through Amazon.com fulfillment centers in the
United States” and that the use of these U.S. fulfillment centers “allows an inference of
commercially significant domestic inventory.” Id. at 145-46 (citing Certain Hand Dryers &
Housing for Hand Dryers, Inv. No. 337-TA-1015, Comm’n Op. at 11 (Oct. 30, 2017)
(“evidence that infringing . . . products sold on Amazon.com are fulfilled from an Amazon.com
facility in Kentucky . . . supports the inference that [foreign defaulting respondents] maintain a
commercially significant inventory of infringing articles in the United States” and that issuance
of a cease and desist order is appropriate))). Brother does not request CDOs against foreign
respondents An An Beauty and Aztech. Brother Motion at 197-98; Brother Sub. at 17-20. The
21
Commission agrees with the ALJ that cease and desist orders should issue as to the 20
respondents identified above for the reasons provided in the RD.12 13
12 In Commissioner Schmidtlein’s view, Brother’s request for CDOs against defaulting
respondents LD Products, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart,
Hongkong Boze, I8, Ikong, Intercon, IPrint, Mangoket, Smartjet, Solong, Super Warehouse, and
Xiaohui is governed by section 337(g)(1), rather than section 337(f)(1). Section 337(g)(1)
governs because the conditions of subsections (A) through (E) are satisfied for each of those
defaulting respondents. For example, each of those defaulting respondents was named in the
complaint and each was served or refused service of the complaint and notice of investigation
satisfying subsections 337(g)(1)(A)-(B). Further, each failed to file an answer to the complaint
and failed to present good cause as to why default should not be found against them satisfying
subsections 337(g)(1)(C)-(D). See Order No. 31 (Jan. 22, 2020), unreviewed by Comm’n Notice
(Feb. 21, 2020); Order No. 26 (Dec. 20, 2019), unreviewed by Comm’n Notice (Jan 16, 2020);
Order No. 25 (Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24
(Dec. 18, 2019), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 8 (Oct. 15, 2019),
unreviewed by Comm’n Notice (Nov. 7, 2019). Brother requested CDOs directed to each of
those defaulting respondents thus satisfying subsection 337(g)(1)(E). Of those defaulting
respondents, I8 and LD Products did participate in the investigation to a limited extent and/or file
submissions, but Commissioner Schmidtlein finds that section 337(g)(1) still governs the request
for CDO relief against I8 and LD Products. Specifically, I8 entered an appearance through
counsel, but soon thereafter failed to participate in the investigation, including failing to respond
to the complaint and a show cause order. See EDIS Doc IDs 690960; Order No. 25. LD
Products filed a notice “that it will not be participating in the Investigation” and “will not oppose
entry of default” and thereafter did not participate in the investigation, including failing to
respond to the complaint. EDIS Doc ID 690803; Order No. 8. LD Products’ statement that it
“will not oppose entry of default” satisfied the condition of subsection 337(g)(1)(D) and obviated
the need under the Commission rules for the ALJ to issue a show cause order. See 19 C.F.R. §
210.16 (b)(3).
In prior investigations, Commissioner Schmidtlein has explained her view that absent
public interest considerations to the contrary the “shall, upon request, issue” language in section
337(g)(1) does not grant the Commission discretion to decline to issue a requested CDO when
the conditions of subsections (A) through (E) are satisfied. See Certain Industrial Automation
Systems and Components Thereof Including Control Systems, Controllers, Visualization
Hardware, Motion and Motor Control Systems, Networking Equipment, Safety Devices, and
Power Supplies, Inv. No. 337-TA-1074, Comm’n Op., Dissenting Views of Commissioner
Schmidtlein (Apr. 23, 2019); Certain Water Filters and Components Thereof, Inv. No. 337-TA-
1126, Comm’n Op. at 10, n.1 (Nov. 12, 2019). Consistent with that view, Commissioner
Schmidtlein finds that the Commission is required to issue the requested CDOs against LD
Products, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Hongkong Boze,
I8, Ikong, Intercon, IPrint, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui.
22
With respect to Respondents Aster, AMI, Greencycle, and Globest, Commissioner
Schmidtlein agrees that section 337(f) governs the requested CDO relief because those four
respondents responded to the complaint. See EDIS Doc. ID 690712 (AMI’s answer); EDIS Doc.
ID 690720 (Globest’s answer); EDIS Doc ID 691633 (Aster’s answer); EDIS Doc ID 691808
(Greencycle answer). However, when the presence of infringing domestic inventory or domestic
operations is asserted as the basis for a CDO under section 337(f)(1), Commissioner Schmidtlein
does not adopt the view that the inventory or domestic operations needs to be “commercially
significant” in order to issue the CDO. See, e.g., Certain Magnetic Tape Cartridges and
Components Thereof, Inv. No. 337-TA-1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Certain
Table Saws Incorporating Active Injury Mitigation Technology & Components Thereof, Inv. No.
338-TA-965, Comm’n Op., 2017 WL 1476193, *4 n.2 (Feb. 1, 2017). In Commissioner
Schmidtlein’s view, the presence of some infringing domestic inventory or domestic operations,
regardless of commercial significance, provides a basis to issue a CDO. Id. Because the record
shows that Aster, AMI, Greencycle, and Globest maintain some domestic inventory or business
operations in the United States Commissioner Schmidtlein supports issuance of CDOs against
Aster, AMI, Greencycle, and Globest.
13 Commissioner Karpel would issue CDOs directed to defaulting respondents AMI,
Globest, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8, Solong, Billiontree, Carlos
Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket, Smartjet, Super Warehouse,
and LD Products. For the reasons noted in Certain Powered Cover Plates, Inv. No. 337-TA-
1124, Comm’n Op. at 22-23 n.20 (June 11, 2020) and in Certain Pocket Lighters, Inv. No. 337-
TA-1142, Comm’n Op. at 19-20 n.15 (July 13, 2020), Commissioner Karpel does not consider
the Commission’s determination to issue a GEO under section 337(d)(2) to direct that the
requested CDOs with respect to defaulting respondents Xiaohui, Ecoolmart, Intercon, Do it
Wiser, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint,
Mangoket, Smartjet, and Super Warehouse be considered under section 337(f)(1). Rather, she
considers section 337(g)(1) is the appropriate authority for the issuance of CDOs as to these
defaulting respondents because the criteria for issuance of CDOs under subsection 337(g)(1)(A)-
(E) are met as to these respondents. Each of these respondents was named in the complaint and
each was served or refused service of the complaint and notice of investigation. See Order No.
31 (Jan. 22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020) (finding Xiaohui in default
for failing to respond to the complaint and notice of investigation); Order No. 26 (Dec. 20,
2019), (finding Ecoolmart and Intercon in default for failing to respond to the complaint and
notice of investigation), unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18,
2019) (finding Do It Wiser and Solong in default for failing to respond to the complaint and
notice of investigation), unreviewed by Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18,
2019) (finding Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint,
Mangoket, Smartjet, and Super Warehouse in default for failing to respond to the complaint and
notice of investigation), unreviewed by Comm’n Notice (Jan. 16, 2020). The ALJ issued show
cause orders ordering these respondents to show cause why they should not be held in default for
failing to respond to the complaint and notice of investigation. See id. None of these
respondents filed responses to the show cause orders. Id. These findings satisfy subsections
337(g)(1)(A)-(D). Brother requested CDOs limited to each of these defaulting respondents thus
23
C. Aster’s Newly Designed Products
1. Aster’s Submission
Aster argues that its newly designed products should be excluded from any remedial
orders that issue. According to Aster, it timely disclosed its newly designed products to Brother
on November 22, 2019, during the discovery phase of the investigation. Id. at 2. Aster states
that it and Brother then entered into an agreement on January 31, 2020 (“Agreement”), “agreeing
and stipulating that Aster’s Newly Designed Products produced to Brother on November 22,
2019, ‘… will not be covered by any remedial order that issues in this Investigation directed to
toner cartridges and components thereof that infringe [the Asserted Claims of the Asserted
satisfying subsection 337(g)(1)(E). Given that subsections 337(g)(1)(A)-(E) are satisfied and
Brother requested CDOs directed to these respondents, the statute directs the Commission to
issue the requested CDOs, subject to consideration of the public interest. The public interest
factors as detailed in Section II.D infra do not support a finding that CDOs directed to these
defaulting respondents in this investigation would be contrary to the public
interest. Accordingly, Commissioner Karpel would issue CDOs against Xiaohui, Ecoolmart,
Intercon, Do it Wiser, Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze,
Ikong, IPrint, Mangoket, Smartjet, and Super Warehouse under section 337(g)(1).
Commissioner Karpel agrees that Section 337(f) applies with respect to Brother’s request
for CDOs as to respondents Aster, Ami, Globest, Greencycle, 18, and LD
Products. Respondents Aster, AMI, Globest, and Greencycle filed answers to the
complaint. See EDIS Doc ID 691633 (Aster answer); EDIS Doc. ID 690711 (AMI answer);
EDIS Doc. ID 690720 (Globest answer); EDIS Doc. ID 691808 (Greencycle
answer). Respondent I8 entered an appearance through counsel, requested additional time to file
an answer to the complaint, and thereafter failed to participate in the investigation after its
counsel withdrew from representation. See EDIS Doc IDs 690960, 6922223. Respondent LD
Products was found in default based on filing a notice of default pursuant to Commission Rule
210.16(b)(3), and thus the ALJ did not issue a show cause order. For these reasons, the criteria
for section 337(g)(1) are not met as to these respondents and that section 337(f)(1) is the
appropriate authority with respect to CDOs for these respondents. Commissioner Karpel concurs
that respondents Aster, Ami, Globest, Greencycle, 18, and LD Products have sufficient
inventories or business operations in the United States to support the issuance of CDOs directed
to these respondents, subject to consideration of the public interest. The public interest factors as
detailed in Section II.D infra do not support a finding that CDOs directed to these respondents in
this investigation would be contrary to the public interest.
.
24
Patents].’” Id. (citing Agreement at ¶¶ 1.12-1.19 (emphasis added by Aster)). Subsequently,
Brother and Aster filed a Joint Stipulation on March 4, 2020, attaching the Agreement and
summarizing its terms. See Joint Stipulation of Brother and Aster for Resolution as to Aster in
the Investigation (March 4, 2020) (“Joint Stipulation”). In the Joint Stipulation, Aster agreed
that it “would ‘… not argue or otherwise dispute’ that any of the Original Design Products
[Aster’s accused products] … should be excluded from the scope of any remedy …” Aster Sub.
at 2 (citing Joint Stip. at ¶ 13; Agreement at ¶ 1.4). Accordingly, while Order No. 40, which
grants Brother’s motion for summary determination of violation “makes infringement findings
against Aster’s Original Design Products and recommends that they be subject to a CDO, a
GEO, or in the alternative, an LEO,” it “does not mention Aster’s Newly Designed Products or
recommend that Aster’s Newly Designed Products be included within the scope of the ALJ’s
recommended LEO, GEO, or CDO remedies.” Id. at 3-4. Aster contends that pursuant to its
Agreement with Brother, the Commission’s remedial orders should include an express carve out
for Aster’s newly designed products. Id. at 6.
Aster anticipates that “Brother will suggest that the parties agreed that only Aster (and
Aster-related entities) and Aster’s customers are permitted to import Aster’s Newly Designed
Products into the United States” and argues that “[s]uch an assertion has no merit because the
plain language of the Agreement clearly says that Aster’s Newly Designed Products will not be
covered by any remedial order that may issue.” Id. at 9 (citing Agreement at ¶¶ 1.14-1.19).
Aster points to the Agreement’s provision that:
1.14. The Parties agree that toner cartridges that are compatible with Brother’s
TN-221BK, TN-221C, TN-221M, TN-221Y, TN-225C, TN-225M, or TN-225Y
toner cartridges and have the specific configurations shown in Figures 1-5 in
Table 7 below (including those with Aster-, Arcon-, Aztech-, CMYBabee-, Cool
Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands) will not be covered
by any remedial order that issues in this Investigation directed to toner cartridges
25
and components thereof that infringe one or more of Claims 1-5, 10, and 12-15 of
the ’093 Patent; Claims 1, 3, 5, 7-12, and 18 of the ’387 Patent; or Claims 1, 7-11,
15, and 16 of the ’460 Patent.
Agreement at ¶¶ 1.14-1.19 (emphasis added by Aster). Aster asserts that “[t]he clear language of
the Agreement establishes that it is Aster’s Newly Designed Products that the parties agreed
should not be covered by any remedial order that issues” and that “[t]he parties did not agree that
only certain people/entities could import Aster’s Newly Designed Products.” Id. at 9-10.
2. Brother’s Response
Brother states that “[a]n express carve-out is inappropriate for Aster’s Newly Designed
Products because, as Aster acknowledges, those products were not adjudicated in this
Investigation.” Brother Rep. at 2-3. Brother argues that the Commission should not depart from
its long-standing practice not to include express carve-outs in remedial orders for non-
adjudicated products. Id. (citing See Certain Optical Disk Controller Chips & Chipsets &
Products Containing Same, Including DVD Players & PC Optical Storage Devices, Inv. No.
337-TA-506, Comm’n Op. at 56 (Sept. 28, 2005) (finding “no basis for specifically exempting
[the MT1888] chip from the limited exclusion order” because “[t]he Commission’s long-
standing practice is to direct its remedial orders to all products covered by the patent claims as to
which a violation has been found” and “neither the ALJ nor the Commission found that the
MT1888 chip does not infringe or, in fact, made any infringement determination as to the
MT1888 chip”); Certain Magnetic Tape Cartridges & Components Thereof, Inv. No. 337-TA-
1058 (“Magnetic Tape”), Comm’n Op. at 58 (Mar. 25, 2019) (concurring with “the ALJ’s
recommendation against including an express carve out” for certain products because it was
“clear from the record that these products … were not adjudicated as part of this investigation”)).
Brother also argues that an express carve-out for these products would be redundant and
unnecessary. Id. at 4-5. According to Brother, “the general exception for imports made ‘with
26
the permission[] of the patentee’ in GEOs, the general exception for ‘if … the owner of the
Asserted Patents … authorizes’ in CDOs, and Brother’s and Aster’s agreement regarding the
Newly Designed Products (i.e., the Agreement) already allow Aster to import and sell its Newly
Designed Products in the United States.” Id. Brother states that “[t]he Agreement expressly
states that the Newly Designed Products, including those with each of the brand names identified
through discovery with which Aster admitted affiliation, “will not be covered by any remedial
order that issues in this Investigation.” Id. at 4 (citing See Agreement at ¶¶ 1.14-1.19 (Jan. 31,
2020)). As Brother explains, “Aster has Brother’s permission to import and sell the Newly
Designed Products in the United States.” Id.
Brother asserts that “Aster improperly attempts to expand the scope of the Agreement so
it may inure the benefits of the Agreement to any number of unknown and unidentified entities.”
Brother Rep. at 8. Brother finds it “particularly troubling in light of Aster’s request that it and
these unnamed entities also be permitted to import products without first proving to CBP that
their products are covered by the Agreement” and that “[s]uch a loophole would make it
unnecessarily challenging for CBP to effectively enforce the GEO.” Id. Brother states that
“[t]he Agreement is only between Brother and Aster” (Agreement at 1) and “clearly states that it
‘may not be assigned, licensed, or delegated without the express written consent of the Parties.’”
Id. (citing Agreement at ¶ 5.7). Brother emphasizes that it “has not and does not consent to
entities other than Aster entities importing the Newly Designed Products.” Id.
3. OUII Response
OUII agrees that “Aster’s Newly Designed Products should not be covered by any
remedial order that issues in this investigation and that there should not be any finding of
infringement as to those products.” OUII Rep. at 2. OUII, however, argues that an express carve
out is not warranted because the “Commission has generally included express carve outs in
27
exclusion orders only for products that were found to be non-infringing,” but that here, the newly
designed products were not found to be non-infringing. Id. at 4 (citing Certain Powered Cover
Plates, Inv. No. 337-TA-1124, Comm’n Op. at 19-20 (July 10, 2020) (EDIS Doc. ID 714335)
(excluding redesigns found to be non-infringing from the scope of the GEO)). In OUII’s view,
the language proposed in the “GEO is sufficient to cover the newly designed products set forth in
the Aster Joint Stipulation and Agreement, and that by agreeing that Aster’s . . . newly designed
toner cartridges are outside the scope of any remedial order, Brother has provided permission to
allow their importation.” Id. Thus, “[a]ny additional express carve out would simply be
redundant and unnecessary.” Id.
OUII also argues that the “Aster Joint Stipulation and Agreement do not contain . . .
limiting language” included in agreements with other respondents. Id. As an example, OUII
points to the agreement between Brother and AMI, which states that:
AMI Stipulation at ¶ 22.14 Thus, OUII states that “the Aster Joint Stipulation and Agreement do
not restrict permissible importation of Aster’s Newly Designed Products to any particular
entity.” Id. at 7.
14 We note that Brother entered into joint agreements with AMI, Cartridge Evolution, E-Z Ink,
Globest, and Linkyo, stipulating that it would not accuse their Newly Designed Products of
infringement in this investigation. ID at 34; Brother and AMI Joint Stipulation as to Original
and Newly Designed Products at ¶¶ 12-20 (Feb. 3, 2020); Brother and Cartridge Evolution Joint
Stipulation as to Original and Newly Designed Products at ¶¶ 13-21 (Feb. 3, 2020); Brother and
E-Z Ink Joint Stipulation as to Original and New Designed Products at ¶¶ 13-21 (Feb. 3, 2020);
28
4. Analysis
The Commission finds that the Joint Stipulation and Agreement between Brother and
Aster with respect to specifically identified newly designed products is pertinent to the
enforcement of the remedial orders here.15 The Agreement expressly identifies these products in
paragraphs 1.14 through 1.19 and states that these enumerated toner cartridges “will not be
covered by any remedial order that issues in this Investigation directed to toner cartridges and
components thereof that infringe” asserted claims of the patents at issue. See Agreement ¶¶ 1.14
– 1.19. Brother states that, through the Agreement, it has assented to the importation and sale of
the specifically enumerated toner cartridge models. See Brother Rep. at 4 (“In other words,
Aster has Brother’s permission to import and sell the Newly Designed Products in the United
States.”). It is unnecessary here to include an express exemption for these products in the
remedial orders, however, as these products are already the subject of the Joint Stipulation and
Agreement between the parties.
The Commission further finds that the Joint Stipulation and Agreement do not restrict
permissible importation of the identified Newly Designed Products to any particular entity. As
OUII notes, “In general, the Aster Joint Stipulation and Agreement both state, inter alia, that
Brother and Aster agree that Aster’s Newly Designed Products will not be covered by any
remedial order that issues in this investigation.” OUII Rep. at 6 (citing Aster Joint Stipulation at
Brother and Globest Joint Stipulation as to Original and Newly Designed Products at ¶¶ 13-21
(Feb. 7, 2020); Brother and Linkyo Joint Stipulation as to Original and Newly Designed Products
at ¶¶ 12-26 (Feb. 7, 2020).
15 Aster’s Newly Designed Products are identified in the Agreement and Joint Stipulation by
product numbers: AN-B0221, AN-B0223, AN-B0225, AN-B0227, AS-B0420, AS-B0450, AS-
B0630, AS-B0660, AN-B0730, AN-B0760, and AN-B0770 and Bates numbers Aster PX-1,
Aster PX-2, Aster PX-3, Aster PX-4, Aster PX-5, Aster PX-6, Aster PX-7, Aster PX-8, Aster
PX-9, Aster PX-10, and Aster PX-11 respectively (for the physical samples produced to
Brother). Agreement at ¶¶ 1.14 – 1.19; Joint Stip. at ¶ 6. These Newly Designed Products are
also depicted in photographs within the Agreement. See Tables 7–12 of the Agreement.
29
¶ 11; Aster Agreement at ¶¶ 1.12-1.19; Aster Br. at 9). For instance, exemplary paragraph 1.14
to the Agreement states:
Agreement at ¶ 1.14. As is evident from the language of paragraphs 1.14 through 1.19, the
products that the parties agree “will not be covered by any remedial order that issues in this
Investigation” are identified in terms of (1) compatibility with Brother’s identified toner
cartridges; (2) conformity with identified configurations specified in the referenced Tables of the
Agreement; and (3) include branded toner cartridges “with Aster-, Arcon-, Aztech-, CMYBabee-
, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.” Id. No language in these
paragraphs limit the entities that would be authorized to import these products. There is no such
limiting language elsewhere in the Joint Stipulation or Agreement.
Brother argues that the Agreement does not allow “[a]ny entity … to import Aster’s
Newly Designed Products.” Brother Rep. at 11. We find this argument unpersuasive because
Brother has not shown that the language of the Joint Stipulation and Agreement restricts
importation of the identified newly designed products to any specific entities. The Commission
finds that nothing in the Agreement or Joint Stipulation is so limiting. The Agreement and Joint
Stipulation are directed to products not covered by the remedial orders, not the identity of the
importer. Thus, the Commission declines to read such a restriction into the parties’ Agreement.
30
D. The Public Interest
Prior to issuing remedial orders under section 337, the Commission must weigh the effect
the orders would have on four public interest factors: (1) the public health and welfare;
(2) competitive conditions in the United States economy; (3) the production of like or directly
competitive articles in the United States; and (4) United States consumers. 19 U.S.C. §§ 1337(d),
(f). “[T]he statute does not require the Commission to determine that a remedial order would
advance the public interest factors but rather requires the Commission to consider whether
issuance of such an order will adversely affect the public interest factors.” Certain Loom Kits for
Creating Linked Articles, Inv. No. 337-TA-923, Comm’n Op. at 15 (June 26, 2015) (“Loom
Kits”) (internal citation omitted). The Commission finds that entry of the recommended GEO
and CDOs would not be contrary to the public interest.
1. Public Health and Welfare
The remedial orders do not raise any public health or welfare concerns. As observed by
the Federal Circuit, remedial orders have been denied based on overriding public interest
concerns in only a handful of investigations, where having “inadequate supply within the United
States—by both the patentee and domestic licensees—meant that an exclusion order would
deprive the public of products necessary for some important health or welfare need: energy
efficient automobiles, basic scientific research, or hospital equipment.” Spansion, Inc. v. U.S.
Int’l Trade Comm’n, 629 F.3d 1331, 1360 (Fed. Cir. 2010); see, e.g., Certain Ink Cartridges and
Components Thereof, Inv. No. 337-TA-946, Comm’n Op. at 4-13 (June 29, 2016) (“Ink
Cartridges”); Toner Cartridges, Comm’n Op. at 4-11; Certain Toner Cartridges and
Components Thereof, Inv. No. 337-TA-740, Comm’n Op. at 4-8 (Oct. 5, 2011). The toner
cartridges at issue in this investigation do not implicate public health or welfare concerns.
31
2. Competitive Conditions in the United States Economy
There appears to be a large number of other manufacturers of toner cartridges, including
HP, Epson, Samsung, Canon, Panasonic, Dell, Xerox, Lexmark, Ricoh, and PrintRite can
adequately supply the domestic market. See, e.g., https://www.reportsanddata.com/report-
detail/printer-ink-cartridges-market (accessed Sept. 18, 2020); see also Ink Cartridges, Comm’n
Op. at 16 (finding that there are numerous competitors in the market for ink cartridges that will
not be affected by remedial orders); Toner Cartridges, Comm’n Op. at 14 (finding that there are
many other companies in the toner cartridge market such as Dell, Epson, Lexmark, Ricoh,
Samsung, and Xerox that sell toner cartridges and would be able to meet domestic demand).
Thus, remedial orders will not cause adverse competitive conditions in the US economy.
3. The Production of Like or Directly Competitive Articles in the United
States
As OUII notes, “the accused products are manufactured abroad, whereas Brother
remanufactures used toner cartridges in the U.S.” OUII Sub. at 17 (citing ID at 104). The fact
that the articles covered by the remedial orders are made outside of the United States means that
the orders will not affect the production of like or directly competitive articles in the United
States.
4. United States Consumers
Brother asserts that it “manufactures products that can replace all of the infringing
articles that would be subject to exclusion” and that “[s]ince 2010, Brother has sold millions of
toner cartridges in the United States that practice the Asserted Patents, and that are competitive
with, and indeed are direct replacements for, the infringing articles.” Brother Sub. at 21-22.
Brother notes that “Aster and the Defaulting Respondents all market their infringing toner
cartridges as direct alternatives to Brother’s toner cartridges.” Id. at 22. Brother further asserts
32
that it “can manufacture and distribute products in quantities sufficient to meet demand if the
infringing articles are subject to exclusion, using its existing distribution networks.” Id. Brother
adds that, in addition, “[t]here also are numerous other well-known companies that sell similar
types of laser print systems and toner cartridges that compete with Brother laser printing
systems, such as Canon, Hewlett Packard, and Dell” and that “[n]one of these companies would
be impacted by the requested remedial orders, and their products are another alternative to
Brothers systems.” Id. In sum, Brother and other toner manufacturers can adequately supply the
U.S. market and so an exclusion order will not harm U.S. consumers of toner cartridges.
Accordingly, the Commission finds that the remedial orders will not be adverse to United States
consumers.
E. Bond
When the Commission enters an exclusion order and/or CDO, a respondent may continue
to import and sell its products during the 60-day period of Presidential review subject to posting
a bond. 19 U.S.C. § 1337(j)(3). The amount of the bond is specified by the Commission and
must be sufficient to protect a complainant from any injury. Id.; 19 C.F.R. § 210.50(a)(3). “The
Commission typically sets the bond based on the price differential between the imported
infringing product and the domestic industry article or based on a reasonable royalty. However,
where the available pricing or royalty information is inadequate, the bond may be set at one
hundred (100) percent of the entered value of the infringing product.” Loom Kits, Comm’n Op.
at 17-19 (internal citations omitted). The Commission has set a 100 percent bond in cases where
respondents have defaulted and provided no discovery regarding pricing, precluding any reliable
determination of an appropriate bond amount. See id. at 19.
As the RD noted, “In appropriate circumstances, the Commission sets different bond
rates for different respondents.” RD at 147 (citing e.g., Certain Foam Footwear, Inv. No. 337-
33
TA-567, Comm’n Op. at 9 (Aug. 2, 2011); Certain Coaxial Cable Connectors & Components
Thereof & Prod. Containing Same, 337-TA-650, Comm’n Notice at 2 (Sept. 13, 2011)). The RD
further noted that “[t]he Commission may also set different bond rates for different products of
the same respondent.” Id. (citing Certain Magnetic Data Storage & Tape Cartridges Containing
the Same (II), Inv. No. 337-TA-1076, Comm’n Op. at 67 (June 20, 2019).
The RD observed that “Brother, AMI, Aster, and Globest stipulated to different bond
rates for different Accused Products, as shown below, based on the calculated price differentials
for those products.” Id. (citing AMI Import. Stip., Ex. A; Aster Import. Stip., Ex. A; Globest
Import. Stip., Ex. A.)
Infringing Products AMI Aster Globest
Accused 221/225 Products 568% 1463% 900%
Accused 223/227 Products 274% 336% 372%
Accused 420/450 Products - 623% 682%
Accused 630/660 Products 575% 886% 635%
Accused 730/760/770 Products 589% 354% 369%
The RD stated that “[a]s these bond rates were calculated using reliable data and the
parties agreed to the percentages, I recommend entry of bond at the above-referenced bond
rates.” Id. at 147-48. The RD recommended a bond rate of 100% of the entered value of
infringing toner cartridges and components thereof for the remaining defaulting respondents. Id.
at 148.
OUII “agrees with the ALJ’s recommendation in view of the parties’ stipulated bond
calculations.” OUII Sub. at 20. For the remaining respondents, OUII agrees with the ALJ that
the Commission set a bond in the amount of 100 percent of the entered value of infringing
34
products imported inasmuch as Brother was not able to obtain adequate discovery from these
defaulting respondents. The Commission agrees with the ALJ’s recommendation and has
determined to set the bond in the amounts prescribed in the table above and at one hundred
(100%) percent of the entered value of infringing toner cartridges and components thereof for the
remaining defaulting respondents.
III. CONCLUSION
For the reasons detailed above, the Commission has determined to (1) issue a GEO
prohibiting the unlicensed importation of certain toner cartridges, components thereof, and
systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093
Patent; claims 1, 7-11, 15, and 16 of the ’460 Patent; claims 1-7, and 9 of the ’856 Patent; claims
1, 4, 5, and 9 of the ’456 Patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 Patent; (2) issue
cease and desist orders directed to Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco
Imaging, Ecoolsmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD
Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui; (3) find that the public
interest does not preclude the issuance of the remedial orders; and (4) set the bond during the
period of Presidential review in the amount of the following percentages of the entered value for
respondents AMI, Aster, and Globest:
Infringing Products AMI Aster Globest
Accused 221/225 Products 568% 1463% 900%
Accused 223/227 Products 274% 336% 372%
Accused 420/450 Products - 623% 682%
Accused 630/660 Products 575% 886% 635%
Accused 730/760/770 Products 589% 354% 369%
35
The Commission determines to set the bond in the amount of one hundred (100%) percent of the
entered value for all other infringing articles.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: December 17, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached COMMISSION OPINION has been
served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the
following parties as indicated, on December 17, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd., Brother
International Corporation (U.S.A.), and Brother Industries
(U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents AMI Brothers, Inc. and Globest
Trading Inc.:
Gary M. Hnath, Esq.
MAYER BROWN LLP
1999 K Street, NW
Washington, DC 20006
Email: ghnath@mayerbrown.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent LD Products, Inc.
Steven E. Adkins, Esq. ☐ Via Hand Delivery
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 2
McGUIREWOODS LLP
2001 K Street, NW, Suite 400
Washington, DC 20006
Email: seadkins@mcguirewoods.com
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
Respondents:
An An Beauty Limited
Flat/Room 2104 21/F, Mongkok Commericial Centre
16 Argyle Street, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Aztech Enterprises Limited
Units 1206, 12/F, Hheuk Nang Center
9 Hillwood Road
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Billiontree Technology USA Inc.
19945 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Carlos Imaging Supplies, Inc.
PMB 540
17128 Colima Road
Hacienda Heights, CA 91745
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Do It Wiser, LLC
2422 Old Capital Trail
Suite 747
Wilmington, DE 19808
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Eco Imaging Inc.
PMB A839
14252 culver Drive
Irvine, AC 92604
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 3
Completed by Complainants
Ecoolmart Co.
PMB 322
17360 Colima Road
Rowland Heights, CA 91748
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Greencycle Tech, Inc.
9638 Rush Street, Unit E
South El Monte, CA 91733
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Hongkong Boze Co., Ltd.
Flat/Room A 27/F, Billion Plaza 2,
10 Cheung Yee Street, Lai Chi Kok,
Kowloon, Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
I8 International, Inc.
19961 Harrison Avenue
City of Industry, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Ikong E-Commerce
PMB 429, 385 South Lemon Avenue
Suite E
Walnut, CA 91789
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Intercon International Corp.
PMB 109, 407 West Imperial Highway
Suite H
Brea, CA 92821
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
IPrint Enterprise Limited
Rooms 1318-19, 13/F Hollywood Plaza
610 Nathan Road, Mongkok, Kowloon,
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
Certificate of Service – Page 4
☒ Other: Service to Be
Completed by Complainants
Mangoket LLC
1641 West Main Street
Suite 222
Alhambra, CA 91801
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Solong E-Commerce Co., LLC
Flat/Room 19C, Lockhart Center,
301-307 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Smartjet E-Commerce Co., LLC
Flat/Room A 20/F, Kiu Fu Commercial Building,
300 Lockhart Road, Wan Chai
Hong Kong 999077
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Super Warehouse Inc.
1160 Yew Avenue
DSS-5179
Blaine, WA 98230
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
Zhuhai Xiaohui E-Commerce., Ltd.
Room 502, Factory five, No. 12, Pingdong 3rd Road
Nanping Keji Industrial Park, Xiangzhou District,
Zhuhai, China 519000
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by Complainants
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND
SYSTEMS CONTAINING SAME
Investigation No. 337-TA-1174
NOTICE OF A COMMISSION DETERMINATION NOT TO REVIEW
AN INITIAL DETERMINATION GRANTING COMPLAINANTS’ MOTION
FOR SUMMARY DETERMINATION OF A VIOLATION OF SECTION 337;
SCHEDULE FOR FILING WRITTEN SUBMISSIONS ON REMEDY, THE PUBLIC
INTEREST, AND BONDING
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that, on July 23, 2020, the presiding administrative law
judge (“ALJ”) issued an initial determination (“ID”) (Order No. 40) in the above-captioned
investigation, granting summary determination on violation of section 337 and including a
recommended determination (“RD”) on remedy and bonding. The Commission has determined
not to review the ID. The Commission requests briefing from the parties, interested government
agencies, and interested persons on the issues of remedy, the public interest, and bonding.
FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,
telephone (202) 205-3179. 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 EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its 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 September 17, 2019, the Commission instituted
this investigation based on a complaint filed by Brother Industries, Ltd. of Nagoya Japan;
Brother International Corp. (U.S.A.) of Bridgewater, New Jersey; and Brother Industries
(U.S.A.), Inc. of Bartlett, Tennessee (collectively, “Brother”). 84 FR 49762-63 (Sept. 23, 2019).
The complaint alleged violations of section 337 based on the importation into the United States,
the sale for importation, or the sale within the United States after importation of certain toner
cartridges, components thereof, and systems containing same by reason of infringement of
certain claims of U.S. Patent Nos. 9,568,856; 9,575,460; 9,632,456; 9,785,093; and 9,846,387
(collectively, “the Asserted Patents”). Id. The Commission’s notice of investigation named the
2
following 32 respondents: AMI Brothers, Inc. of San Bruno, California (“AMI”); An An Beauty
Limited of Kowloon, Hong Kong (“An An Beauty”); Aster Graphics, Inc. of Riverside,
California (“Aster”); Aztech Enterprises Limited of Kowloon, Hong Kong (“Aztech”);
Billiontree Technology USA Inc. of City of Industry, California (“Billiontree”); Carlos Imaging
Supplies, Inc. of Hacienda Heights, California (“Carlos”); Cartridge Evolution, Inc. of Brooklyn,
New York (“Cartridge Evolution”); Do it Wiser, LLC of Wilmington, Delaware (“Do it Wiser”);
Eco Imaging Inc. of Irvine, California (“Eco Imaging”); Ecoolsmart Co. of Rowland Heights,
California (“Ecoolsmart”); EPrinter Solution LLC of Pomona, California (“EPS”); E–Z Ink Inc.
of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”);
Greencycle Tech, Inc. of South El Monte, California (“Greencycle”); Hongkong Boze Co., Ltd.
of Kowloon, Hong Kong (“Hongkong Boze”); I8 International, Inc. of City of Industry,
California (“I8”); IFree E-Commerce Co. of Kowloon, Hong Kong (“IFree”); Ikong E-
Commerce of Walnut, California (“Ikong”); Intercon International Corp. of Brea, California
(“Intercon”); IPrint Enterprise Limited of Kowloon, Hong Kong (“IPrint”); LD Products, Inc. of
Long Beach, California (“LD Products”); Linkyo Corp. of La Puente, California (“Linkyo”);
Mangoket LLC of Alhambra, California (“Mangoket”); New Era Image LLC of Corona,
California (“New Era”); OW Supplies Corp. of Corona, California (“OW Supplies”); Solong E-
Commerce Co., LLC of Wan Chai, Hong Kong (“Solong”); Smartjet E-Commerce Co., LLC of
Wan Chai, Hong Kong (“Smartjet”); Super Warehouse Inc. of Blaine, Washington (“Super
Warehouse”); Theresa Meng of Brooklyn, New York (“Ms. Meng”); Triple Best LLC of San
Diego, California (“Triple Best”); V4ink, Inc. of Diamond Bar, California (“V4ink”); and Zhuhai
Xiaohui E-Commerce Co., Ltd. of Zhuhai, China (“Xiaohui”). Id. at 49762-63. The notice of
investigation also names the Office of Unfair Import Investigations (“OUII”) as a party. Id. at
49763.
Of the 32 respondents, only one, Aster, is participating at this stage. Aster, however,
decided not to oppose the summary determination motion of violation as to the accused products,
even though Aster’s products are subject to the motion. See Joint Stipulation of Brother and
Aster for Resolution as to Aster in the Investigation (Mar. 4, 2020). EPS and IFree were
terminated from the investigation based upon withdrawal of the complaint against them. See
Order No. 32 (Jan. 28, 2020), unreviewed by Comm’n Notice (Feb. 25, 2020). Cartridge
Evolution, E-Z Ink, Linkyo, New Era, OW Supplies, Ms. Meng, Triple Best, and V4ink were
terminated from the investigation based upon entry of consent orders. See Order No. 36 (Mar.
12, 2020), unreviewed by Comm’n Notice (Mar. 31, 2020); Order No 38 (Mar. 12, 2020),
unreviewed by Comm’n Notice (Mar. 31, 2020); Order No. 37 (Mar. 12, 2020), unreviewed by
Comm’n Notice (Mar. 31, 2020); Order No. 10 (Oct. 18, 2019), unreviewed by Comm’n Notice
(Nov. 6, 2019); Order No. 17 (Nov. 21, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019);
Order No. 28 (Dec. 30, 2019), unreviewed by Comm’n Notice (Jan. 29, 2020); Order No. 18
(Nov. 27, 2019), unreviewed by Comm’n Notice (Dec. 18, 2019); Order No. 33 (Fe. 3, 2020),
unreviewed by Comm’n Notice (Mar. 4, 2020). The following 21 respondents defaulted: AMI,
Globest, An An Beauty, Aztech, Xiaohui, Ecoolmart, Greencycle, Intercon, Do it Wiser, I8,
Solong, Billiontree, Carlos Imaging, Eco Imaging, Hongkong Boze, Ikong, IPrint, Mangoket,
Smartjet, Super Warehouse, and LD Products (collectively, “Defaulting Respondents”). See
Order No. 35 (Mar. 5, 2020), unreviewed by Comm’n Notice (Mar. 19, 2020); Order No. 31 (Jan.
22, 2020), unreviewed by Comm’n Notice (Feb. 21, 2020); Order No. 26 (Dec. 20, 2019),
unreviewed by Comm’n Notice (Jan 16, 2020); Order No. 25 (Dec. 18, 2019), unreviewed by
3
Comm’n Notice (Jan. 16, 2020); Order No. 24 (Dec. 18, 2019), unreviewed by Comm’n Notice
(Jan. 16, 2020); Order No. 8 (Oct. 15, 2019), unreviewed by Comm’n Notice (Nov. 7, 2019).
On March 12, 2020, Brother filed a motion for summary determination of violation of
section 337 by Aster and the Defaulting Respondents and for a recommendation that the
Commission issue a general exclusion order and cease and desist orders. See Complainants’
Motion for Summary Determination of Violation and for Recommended Determination on
Remedy and Bonding. On March 23, 2020, OUII filled a response in support of Brother’s
motion. See Commission Investigative Staff’s Response to Brother’s Motion for Summary
Determination of Violation. No respondent filed a response to Brother’s motion. Id.
On July 23, 2020, the ALJ issued the subject ID granting summary determination of
violation of section 337 by Aster and Defaulting Respondents. The ID finds that the
Commission has subject matter jurisdiction over the investigation. ID at 34. The ID further
finds that none of the respondents contest the Commission’s personal jurisdiction over them or in
rem jurisdiction as to the accused products. ID at 34-35. The ID finds that Brother: (1)
established the importation requirement as to Aster and Defaulting Respondents, ID at 36-79; (2)
demonstrated that the accused products infringe the asserted claims, id. at 118-133; and (3)
demonstrated that the domestic industry (“DI”) products practice at least one claim of each
Asserted Patent and that a DI exists in the United States, id. at 84-118. The RD recommends
issuance of a general exclusion order (“GEO”) (or, in the alternative, a limited exclusion order
directed to Aster and each of the Defaulting Respondents). Id. at 134-44. The RD further
recommends issuance of cease and desist orders (“CDOs”) directed to Aster and each defaulting
respondent that has domestic operations. Id. at 144-46. The RD also recommends setting
different bond rates for entry of the different products covered by the GEO during the period of
Presidential review. Id. at 146-48 (recommended bond rate table at 147). No one petitioned for
review of the ID.
The Commission has determined not to review the ID.
On August 24, 2020, Aster filed a public interest statement in response to the
Commission’s notice soliciting public interest comments pursuant to 19 CFR 210.50(a)(4)(i). In
its submission, Aster argued that any Commission remedial orders issued in this investigation
should not cover its new products pursuant to its stipulation with Brother. See Respondent Aster
Graphics, Inc.’s Statement of Public Interest. On August 26, 2020, Brother filed a response. See
Complainants’ Motion to Strike Aster Graphics, Inc.’s Statement on the Public Interest for
Failure to Comply with Commission Rule 210.15 Or, in the Alternative, for Leave to Respond.
The Commission has determined to reject Aster’s submission as improper under 19 CFR
210.50(a)(4)(i). 19 CFR 210.50(a)(4)(i) provides that parties may file information with the
Commission relating to the public interest. Aster’s submission, however, concerns the scope of
the remedy and therefore does not fall within the ambit of the public interest submissions
provided for under 19 CFR 210.50(a)(4)(i). Brother’s response is thereby moot. The
Commission notes that Aster will have an opportunity to raise its arguments regarding the scope
of any remedial orders in a remedy submission before the Commission in response to the instant
notice, which invites parties to file submissions addressing remedy, bonding and the public
interest as noted below.
4
In connection with the final disposition of this investigation, the statute authorizes
issuance of: (1) an exclusion order that could result in the exclusion of the subject articles from
entry into the United States, and/or (2) one or more cease and desist orders that could result in
Aster and the Defaulting Respondents being required to cease and desist from engaging in unfair
acts in the importation and sale of such articles. Accordingly, the Commission is interested in
receiving written submissions that address the form of remedy, if any, that should be ordered. If
a party seeks exclusion of an article from entry into the United States for purposes other than
entry for consumption, the party should so indicate and provide information establishing that
activities involving other types of entry either are adversely affecting it or likely to do so. For
background, see Certain Devices for Connecting Computers via Telephone Lines, Inv. No. 337-
TA-360, USITC Pub. No. 2843, Comm’n Op. at 7-10 (December 1994).
The statute requires the Commission to consider the effects of any remedy upon the
public interest. The public interest factors the Commission will consider include the effect that
an exclusion order and/or CDO would have on: (1) the public health and welfare; (2)
competitive conditions in the U.S. economy; (3) U.S. production of articles that are like or
directly competitive with those that are subject to investigation; and (4) U.S. consumers. The
Commission is therefore interested in receiving written submissions that address the
aforementioned public interest factors in the context of this investigation.
If the Commission orders some form of remedy, the U.S. Trade Representative, as
delegated by the President, has 60 days to approve, disapprove, or take no action on the
Commission’s determination. See Presidential Memorandum of July 21, 2005. 70 Fed. Reg.
43251 (July 26, 2005). During this period, the subject articles would be entitled to enter the
United States under bond, in an amount determined by the Commission and prescribed by the
Secretary of the Treasury. The Commission is therefore interested in receiving submissions
concerning the amount of the bond that should be imposed if a remedy is ordered.
WRITTEN SUBMISSIONS: Parties to this investigation, interested government agencies, and
any other interested parties are invited to file written submissions on the issues of remedy, the
public interest, and bonding. Such submissions should include views on the recommended
determination by the ALJ on remedy and bonding.
In their initial written submissions, Brother is also requested to identify the remedy
sought and Brother and OUII are also requested to submit proposed remedial orders for the
Commission’s consideration. Brother is further requested to identify the dates the Asserted
Patents expire, to provide the HTSUS subheadings under which the subject articles are imported,
and to supply identification information for all known importers of the subject articles.
Initial written submissions, including proposed remedial orders, must be filed no later
than close of business on September 22, 2020. Reply submissions must be filed no later than the
close of business on September 29, 2020. No further submissions on any of these issues will be
permitted unless otherwise ordered by the Commission.
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 CFR
210.4(f) are currently waived. 85 FR 15798 (Mar. 19, 2020). Submissions should refer to the
5
investigation number (Inv. No. 337-TA-1174) in a prominent place on the cover page and/or the
first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000).
Any person desiring to submit a document to the Commission in confidence must request
confidential treatment. All such requests should be directed to the Secretary to the Commission
and must include a full statement of the reasons why the Commission should grant such
treatment. See 19 CFR 201.6. Documents for which confidential treatment by the Commission
is properly sought will be treated accordingly. A redacted non-confidential version of the
document must also be filed simultaneously with any confidential filing. All information,
including confidential business information and documents for which confidential treatment is
properly sought, submitted to the Commission for purposes of this Investigation may be
disclosed to and used: (i) by the Commission, its employees and Offices, and contract personnel
(a) for developing or maintaining the records of this or a related proceeding, or (b) in internal
investigations, audits, reviews, and evaluations relating to the programs, personnel, and
operations of the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. government
employees and contract personnel, solely for cybersecurity purposes. All contract personnel will
sign appropriate nondisclosure agreements. All non-confidential written submissions will be
available for public inspection at the Office of the Secretary and on EDIS.
The Commission vote for these determinations took place on September 8, 2020.
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.
Lisa R. Barton
Secretary to the Commission
Issued: September 8, 2020
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS
upon the Commission Investigative Attorney, Jennifer Dienes, Esq., and the following parties
as indicated, on September 8, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd.,
Brother International Corporation (U.S.A.), and Brother
Industries (U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN TONER CARTRIDGES,
COMPONENTS THEREOF, AND SYSTEMS
CONTAINING SAME
INV. NO. 337-TA-1174
ORDER NO. 40: INITIAL DETERMINATION GRANTING COMPLAINANTS’
MOTION FOR SUMMARY DETERMINATION OF VIOLATION,
RECOMMENDED DETERMINATION ON REMEDY AND
BONDING
(July 23, 2020)
PUBLIC VERSION
1
Table of Contents
I. Introduction ......................................................................................................................... 5
A. Procedural History ........................................................................................................... 5
B. The Parties ..................................................................................................................... 10
1. Complainants .............................................................................................................. 10
2. Respondents ................................................................................................................ 11
C. The Technology at Issue ................................................................................................ 18
D. The Asserted Patents ...................................................................................................... 19
E. The Domestic Industry Products .................................................................................... 21
F. The Accused Products.................................................................................................... 22
1. Accused Group 1 Products ......................................................................................... 24
2. Accused Group 2 Products ......................................................................................... 26
3. Accused Group 3 Products ......................................................................................... 29
4. Representative Products ............................................................................................. 30
5. Newly Designed Products .......................................................................................... 34
II. Jurisdiction & Importation ................................................................................................ 34
A. Subject Matter Jurisdiction ............................................................................................ 34
B. Personal Jurisdiction ...................................................................................................... 35
C. In Rem Jurisdiction ........................................................................................................ 35
D. Importation..................................................................................................................... 36
AMI ............................................................................................................................ 36
An An Beauty ............................................................................................................. 37
Aster............................................................................................................................ 39
Aztech ......................................................................................................................... 40
Billiontree ................................................................................................................... 41
Carlos Imaging ........................................................................................................... 44
Do It Wiser ................................................................................................................. 46
Eco Imaging ................................................................................................................ 47
Ecoolmart.................................................................................................................... 50
Globest ........................................................................................................................ 51
Greencycle .................................................................................................................. 52
Hongkong Boze .......................................................................................................... 54
I8 ................................................................................................................................. 56
Ikong ........................................................................................................................... 59
PUBLIC VERSION
2
Intercon ....................................................................................................................... 61
IPrint ........................................................................................................................... 62
LD Products ................................................................................................................ 64
Mangoket .................................................................................................................... 69
Solong ......................................................................................................................... 71
Smartjet ....................................................................................................................... 73
Super Warehouse ........................................................................................................ 76
Xiaohui ....................................................................................................................... 79
E. Standing ......................................................................................................................... 81
III. Legal Principles ................................................................................................................ 82
A. Domestic Industry .......................................................................................................... 82
1. Economic Prong ......................................................................................................... 82
2. Technical Prong .......................................................................................................... 83
B. Patent Infringement ........................................................................................................ 83
IV. Domestic Industry ............................................................................................................. 84
A. Technical Prong ............................................................................................................. 84
1. ’093 patent .................................................................................................................. 86
2. ’460 patent .................................................................................................................. 90
3. ’856 patent .................................................................................................................. 92
4. ’456 patent .................................................................................................................. 96
5. ’387 patent ................................................................................................................ 100
B. Economic Prong ........................................................................................................... 104
1. Relevant Domestic Industry Activities ..................................................................... 104
2. Allocation Methods .................................................................................................. 109
3. Plant and Equipment ................................................................................................. 112
4. Labor and Capital ..................................................................................................... 113
5. Brother’s Domestic Industry Investments Are Significant and Substantial ............. 116
V. Infringement .................................................................................................................... 118
A. Representative Products ............................................................................................... 118
B. Asserted Group 1 Patents ............................................................................................. 123
1. ’093 patent ................................................................................................................ 123
2. ’460 patent ................................................................................................................ 125
C. Asserted Group 2 Patents ............................................................................................. 126
1. ’856 patent ................................................................................................................ 127
PUBLIC VERSION
3
2. ’456 patent ................................................................................................................ 129
D. Asserted Group 3 Patent .............................................................................................. 131
VI. Conclusions of Law ........................................................................................................ 133
VII. Recommended Determination on Remedy & Bond ....................................................... 134
A. General Exclusion Order.............................................................................................. 135
1. Circumvention of Limited Exclusion Orders ........................................................... 136
2. Pattern of Violation of Section 337 .......................................................................... 140
B. Limited Exclusion Orders ............................................................................................ 144
C. Cease and Desist Order ................................................................................................ 144
D. Bond During Presidential Review ............................................................................... 146
VIII. Initial Determination ....................................................................................................... 148
PUBLIC VERSION
4
T ABLE OF ABBREVIATIONS
MSD Complainant’s [Brother’s] Motion for Summary Determination of Violation
Confidential Version EDIS Doc. ID 704827 (March 12, 2020)
Public Version EDIS Doc. ID 705126 (March 17, 2020)
Tr. Transcript
Response Commission Investigative Staff's Response to Complainant's Motion for
Summary Determination of Violation
Confidential Version EDIS Doc. ID 705684 (March 23, 2019)
Public Version EDIS Doc. ID 706999 (April 7, 2020)
PUBLIC VERSION
5
I. INTRODUCTION
Imitation may be the sincerest form of flattery but copying patented components of copiers
and printers is not flattery; it is infringement. And importing copied components is unlawful under
section 337 of the Tariff Act of 1930. In this investigation, the complainant has demonstrated
through undisputed evidence that section 337 has been violated through the importation and sale
of infringing toner cartridges.
A. Procedural History
On August 19, 2019, complainants Brother Industries, Ltd.; Brother International
Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”) filed a
complaint alleging violations of section 337 based upon the importation into the United States, the
sale for importation, and the sale within the United States after importation certain toner cartridges,
components thereof, and systems containing the same, by reason of infringement of one or more
of claims 1-5, 10, and 12-15 of U.S. patent No. 9,785,093 (“the ’093 patent”); claims 1, 7-11, 15,
and 16 of U.S. patent No. 9,575,460 (“the ’460 patent”); claims 1-7, and 9 of U.S. patent No.
9,568,856 (“the ’856 patent”); claims 1, 4, 5, and 9 of U.S. patent No. 9,632,456 (“the ’456
patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. patent No. 9,846,387 (“the ’387 patent”)
(collectively, “Asserted Patents”). A supplement to the complaint was filed on August 20, 2019.
EDIS Doc. ID 685778.
On September 17, 2019, the Commission instituted this investigation to determine:
whether there is a violation of subsection (a)(1)(B) of section 337 in the importation
into the United States, the sale for importation, or the sale within the United States
after importation of certain [toner cartridges, components, and systems] by reason
of infringement of one or more of claims 1–5, 10, and 12–15 of the ’093 patent;
claims 1, 7–11, 15, and 16 of the ’460 patent; claims 1–7 and 9 of the ’856 patent;
claims 1, 4–5, and 9 of the ’456 patent; and claims 1, 3, 5, 7–12, and 18 of the ’387
patent; and whether an industry in the United States exists as required by subsection
(a)(2) of section 337.
PUBLIC VERSION
6
84 Fed. Reg. 49762 (Sept. 23, 2019). The plain language description of the accused products or
category of accused products is “laser toner cartridges designed for use with Brother printers, fax
machines, and Multi-Function Centers (‘MFCs’)1.” Id.
The complaint, as supplemented, named the following 32 parties as respondents
(“Respondents”):
• AMI Brothers, Inc.
(“AMI”)
• An An Beauty Limited
(“An An Beauty”)
• Aster Graphics, Inc.
(“Aster”)
• Aztech Enterprises Limited
(“Aztech”)
• Billiontree Technology USA Inc.
(“Billiontree”)
• Carlos Imaging Supplies, Inc.
(“Carlos”)
• Cartridge Evolution, Inc.
(“Cartridge Evolution”)
• Do It Wiser, LLC
(“Do It Wiser”)
• Eco Imaging Inc.
(“Eco Imaging”)
• Ecoolmart Co.
(“Ecoolmart”)
• EPrinter Solution LLC
(“EPS”)
• E-Z Ink Inc.
(“E-Z Ink”)
1 MFCs are printer/copier/scanner/fax combinations.
• Globest Trading Inc.
(“Globest”)
• Greencycle Tech, Inc.
(“Greencycle”)
• Hongkong Boze Co., Ltd.
(“Hongkong Boze”)
• I8 International Inc.
(“I8”)
• IFree E-Commerce Co.
(“IFree”)
• Ikong E-Commerce
(“Ikong”)
• Intercon International Corp.
(“Intercon”)
• IPrint Enterprise Limited
(“IPrint”)
• Linkyo Corp.
(“Linkyo”)
• LD Products, Inc.
(“LD Products”)
• Mangoket LLC
(“Mangoket”)
• New Era Image LLC
(“New Era”)
PUBLIC VERSION
* OW Supplies Corp.
PUBLIC VERSION
¢ Theresa Meng
(“OW Supplies”) (“Ms. Meng”)
¢ Solong E-Commerce Co., LLC ¢ Triple Best LLC
(“Solong”) (“Triple Best”)
¢ Smartjet E-Commerce Co., LLC ¢ V4ink, Inc.
(“Smartjet”) (“V4ink”)
¢ Super Warehouse Inc.
(“Super Warehouse’”’)
¢ Zhuhai Xiaohui E- Commerce Co., Ltd.
(“Xiaohui”)
Of the 32 respondents named in the complaint, 21 were found to be in default after being
successfully served and failing to respond to Orders to Show Cause or filing notices of intent to
default, 8 respondents were terminated from the investigation based on consent order stipulations
and consent orders, and the complaint was withdrawn as to 2 respondents, as shown below.
Respondent
Status
(Default/Consent/Etc.)
Aster
Aster
Stipulated that Aster would not oppose any motion for
summary determination of violation as to Original Design
Products;
Joint Stipulation of Brother and Aster for Resolution as to
Aster in the Investigation (March 4, 2020) (EDIS Doc. ID
704103)
Defaulting Respondents
Default:
Order No. 35 (March 5, 2020) (EDIS Doc. ID 704151),
unreviewed, Notice (March 19, 2020) (EDIS Doc. ID 705425)
An An Beauty
Default:
Order No. 31 (Jan. 22, 2020) (EDIS Doc. ID 699926),
unreviewed, Notice (Feb. 21, 2020) (EDIS Doc. ID 703103)
Aztech
Default;
Order No. 31 (Jan. 22, 2020) (EDIS Doc. ID 699926),
unreviewed, Notice (Feb. 21, 2020) (EDIS Doc. ID 703103)
Billiontree
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413)
PUBLIC VERSION
Respondent
Status
(Default/Consent/Etc.)
Carlos Imaging
Default;
Order No. 24 (Dec. 26, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
Do it Wiser
Default;
Order No. 25 (Dec. 18, 2019) (EDIS Doc. ID 697572),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699414)
Eco Imaging
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413)
Ecoolmart
Default;
Order No. 26 (Dec. 20, 2019) (EDIS Doc. ID 697848)
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699468)
Globest
Default;
Order No. 35 (March 5, 2020) (EDIS Doc. ID 704151),
unreviewed, Notice (March 19, 2020) (EDIS Doc. ID 705425)
Greencycle
Default;
Order No. 26 (Dec. 20, 2019) (EDIS Doc. ID 697848)
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699468)
Hongkong Boze
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
I8
Default;
Order No. 25 (Dec. 18, 2019) (EDIS Doc. ID 697572),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699414).
Ikong
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
Intercon
Default;
Order No. 26 (Dec. 20, 2019) (EDIS Doc. ID 697848)
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699468)
Print
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
LD Products
Default;
Order No. 8 (Oct. 15, 2019) (EDIS Doc. ID 691206),
unreviewed, Notice (Nov. 7, 2019) (EDIS Doc. ID 693710)
Mangoket
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413)
Solong
Default;
Order No. 25 (Dec. 18, 2019) (EDIS Doc. ID 697572),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699414)
PUBLIC VERSION
Respondent
Status
(Default/Consent/Etc.)
Smartjet
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
Super Warehouse
Default;
Order No. 24 (Dec. 18, 2019) (EDIS Doc. ID 697570),
unreviewed, Notice (Jan. 16, 2020) (EDIS Doc. ID 699413).
Xiaohui
Default;
Order No. 31 (Jan. 22, 2020) (EDIS Doc. ID 699926),
unreviewed, Notice (Feb. 21, 2020) (EDIS Doc. ID 703103)
Terminated On the Basis of a Consent Order
Cartridge Evolution
Consent;
Order No. 36 (March 12, 2020) (EDIS Doc. ID 704794),
unreviewed, Notice (March 31, 2020) (EDIS Doc. ID 706544)
E-Z Ink
Consent;
Order No. 38 (March 12, 2020) (EDIS Doc. ID 704797),
unreviewed, Notice (March 31, 2020) (EDIS Doc. ID 706546)
Linkyo
Consent;
Order No. 37 (March 12, 2020) (EDIS Doc. ID 704795),
unreviewed, Notice (March 31, 2020) (EDIS Doc. ID706542)
New Era
Consent;
Order No. 10 (Oct. 18, 2019) (EDIS Doc. ID 691620),
unreviewed, Notice (Nov. 6, 2019) (EDIS Doc. ID 693502)
OW Supplies
Consent;
Order No. 17 (Nov. 21, 2019) (EDIS Doc. ID 695238),
unreviewed, Notice (Dec. 18, 2019) (EDIS Doc. ID 697623).
Theresa Meng
Consent;
Order No. 28 (Dec. 30, 2019) (EDIS Doc. ID 698076),
unreviewed, Notice (Jan. 29, 2020) (EDIS Doc. ID 700635)
Triple Best
Consent;
Order No. 18 (Nov. 27, 2019) (EDIS Doc. ID 695239),
unreviewed, Notice (Dec. 18, 2019) (EDIS Doc. ID 697613)
V4ink
Consent;
Order No. 33 (Feb. 3, 2020) (EDIS Doc. ID 701131),
unreviewed, Notice (March 4, 2020) (EDIS Doc. ID 704076).
Terminated Based on Withdrawal of Complaint
EPS
Terminated based on withdrawal of Complaint;
Order No. 32 (Jan. 28, 2020) (EDIS Doc. ID 700467),
unreviewed, Notice (Feb. 25, 2020) (EDIS Doc. ID 703352)
IFree
Terminated based on withdrawal of Complaint;
Order No. 32 (Jan. 28, 2020) (EDIS Doc. ID 700467),
unreviewed, Notice (Feb. 25, 2020) (EDIS Doc. ID 703352)
10
The Commission investigative staff (“Staff”) is a party to this investigation. 84 Fed. Reg.
at 49763.
Pending before me is an unopposed motion for summary determination filed by Brother
seeking an initial determination that Respondents violated Section 337 and that Brother satisfies
the domestic industry requirement of Section 337. Motion Docket No. 1174-32 (EDIS Doc. ID
704827) (“MSD”). The motion also seeks a recommended determination that the Commission
issue a general exclusion order pursuant to 19 U.S.C. § 1337(d)(2)(A) and (B) covering toner
cartridges and components thereof that infringe the Asserted Patents (or in the alternative limited
exclusion orders against each of Respondents) and setting various bond rates for accused products
imported during the Presidential review period. Id.
B. The Parties
1. Complainants
Complainants are three related entities, as laid out below.
a) Brother Industries, Ltd.
Complainant Brother Industries, Ltd. (“BIL”), also known as Brother Kogyo Kabushiki
Kaisha, is a corporation duly organized and existing under the laws of Japan. Its principal place
of business is 15-1, Naeshiro-cho, Mizuho-ku Nagoya-shi, Aichi-ken, Japan 467-8561. Ex. 6,
Declaration of Donald Cummins at ¶ 6 (Mar. 9, 2020) (“Cummins Decl.”). BIL is the owner of
the entire right and title to, and interest in, the Asserted Patents. Exs. 6-C (’093 Assignment);
6-D (’460 Assignment); 6-E (’856 and ’456 Assignments); 6-F (’387 Assignment).
b) Brother International Corporation (U.S.A.)
Complainant Brother International Corporation (U.S.A.) (“BIC”) is a wholly-owned
subsidiary of BIL and is a corporation duly organized and existing under the laws of the State of
Delaware. Cummins Decl. at ¶ 10. Its principal place of business is 200 Crossing Boulevard,
PUBLIC VERSION
11
Bridgewater, New Jersey 08807. Cummins Decl. at ¶ 11. BIC markets, sells, and supports the
industrial products, home appliances, and business products manufactured by BIL and Brother
Industries (U.S.A.), Inc. (“BIUS”), including printers and printer/copier/scanner/fax combinations
(also called “Multi-Function Centers” or “MFCs”). Cummins Decl. at ¶ 12; Ex. 6-G (“About BIC”
webpage) at 1; Ex 6-H at 2; Ex. 6-I at 1, 3; Ex. 6-J at 2, 3.
c) Brother Industries (U.S.A.), Inc.
BIUS is a wholly owned subsidiary of BIC and is a corporation duly organized and existing
under the laws of the State of Delaware. Cummins Decl. at ¶¶ 35, 36. Its principal place of
business is 7819 North Brother Boulevard, Bartlett, Tennessee 38133. Id. at ¶ 36. BIUS was
incorporated in 1986 and manufactures various domestic goods, including printing equipment.
Cummins Decl. at ¶ 37; Ex. 6-G (“About BIC” webpage) at 1; Ex. 6-AC (Bloomberg page about
BIUS) at 1. BIUS also has a substantial business in refilling and reselling used toner cartridges
and in refurbishing used printers and MFCs returned by customers. Cummins Decl. at ¶ 45; Ex.
6-H at 15.
2. Respondents
Of the 32 respondents named in Brother’s initial complaint, 10 named respondents were
terminated from this Investigation, and 21 were found in default. Only one respondent remains
active in the investigation.
a) Aster
Aster is the only respondent that has not been found in default or been terminated from this
Investigation. However, Aster has stipulated to “waive each of its claims and affirmative defenses”
as to the products at issue in the pending motion for summary determination. Ex. 7 at ¶ 2.2; see
PUBLIC VERSION
12
EDIS Doc. ID 704103 (Joint Stipulation of Brother and Aster for Resolution as to Aster in the
Investigation). Aster has also agreed “not to oppose any motion by Brother for summary by
Brother for summary determination of violation of Section 337 as to the Original Design Products
in this Investigation.” Id. at ¶ 2.4.
Aster is a California corporation with a principal place of business at 12000 Magnolia
Avenue, Suite 101, Riverside, California 92503. Ex. 5 at ¶ 3.18. Aster is a manufacturer and
distributor of printer consumable products. Id. at ¶ 3.19. Aster imports, offers for sale, and sells
after importation into the United States toner cartridges through the website www.goaster.com.
Id. at ¶ 3.26.
b) Terminated Respondents
Respondents EPS, IFree, New Era, OW, Ms. Meng, Triple Best, V4ink, Cartridge
Evolution, E-Z Ink, and Linkyo were terminated from this Investigation for the reasons detailed
below.
EPS and IFree were terminated from this Investigation pursuant to Commission Rule
210.21(a)(1) after Brother and the Commission were unable to serve them with copies of the
complaint. Ex. 2; Order No. 32.
New Era, OW Supplies, Ms. Meng, Triple Best, V4Ink, Cartridge Evolution, E-Z Ink, and
Linkyo were terminated from this investigation pursuant to Commission Rule 210.21(c) after
stipulating to consent orders. Order Nos. 10 (New Era), 17 (OW Supplies), 18 (Triple Best), 28
(Ms. Meng), 33 (V4Ink), 36 (Cartridge Evolution), 37 (Linkyo), and 38 (E-Z Ink).
c) Defaulting Respondents
Respondents An An Beauty, AMI, Aztech, Billiontree, Carlos Imaging, Do It Wiser, Eco
Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD
PUBLIC VERSION
13
Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui (collectively, the
“Defaulting Respondents”) were found in default.
(1) AMI
AMI is a California corporation with a principal place of business at 1370 Valley Vista
Drive, Suite 200, Diamond Bar, California 91765 that is in the wholesale and retail business. Ex.
5 at ¶ 3.8. AMI owns the “Arthur Imaging” registered trademark and operates the website
arthurimaging.com through which it offers for sale Arthur Imaging-branded toner cartridges. Id.
at ¶¶ 3.9-3.10. AMI also offers for sale Arthur Imaging-branded toner cartridges through the
“Arthur Office Supply” storefront on Amazon.com. Id. at ¶ 3.11.
(2) An An Beauty
An An Beauty is a limited liability corporation organized and existing under the laws of
Hong Kong with a principal place of business at Flat/Room 2104 21/F, Mongkok Commercial
Centre, 16 Argyle Street, Mongkok KL, Hong Kong 999077. Ex. 5 at ¶ 3.12. An An Beauty owns
the “CMYBabee” registered trademark and offers for sale CMYBabee-branded toner cartridges
through its website cmybabee.com and the Babeeink storefront on Amazon.com. Id. at ¶¶ 3.13-
3.15.
(3) Aztech
Aztech is a limited liability corporation organized and existing under the laws of Hong
Kong with a principal place of business at Units 1206, 12/F, Cheuk Nang Center, 9 Hillwood Road,
Kowloon, Hong Kong 999077. Ex. 5 at ¶ 3.30. Aztech owns an “Aztech” registered trademark
and offers for sale Aztech-branded toner cartridges through the website aztech-supplies.com and
through the AZ-TECH and Chessmo storefronts on Amazon.com. Id. at ¶¶ 3.31-3.34.
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14
(4) Billiontree
Billiontree is a California corporation with a principal place of business at 19945 Harrison
Avenue, City of Industry, California 91789. Ex. 5 at ¶ 3.36. Billiontree owns the “Toner
Kingdom” registered trademark and offers for sale Toner Kingdom-branded toner cartridges
through the website billion-tree.com and through the Palmtree Store and YangM storefronts on
Amazon.com. Id. at ¶¶ 3.37-3.39.
(5) Carlos Imaging
Carlos Imaging was a California corporation with a principal place of business at PMB
540, 17128 Colima Road, Hacienda Heights, California 91745, that was dissolved in January 2017.
Ex. 5 at ¶¶ 3.41, 3.43. Carlos Imaging owns the “Green Toner Supply” registered trademark and
offered for sale Green Toner Supply-branded toner cartridges. Id. at ¶ 3.42. Despite Carlos
Imaging’s dissolution, Green Toner Supply-branded toner cartridges are still being sold and
offered for sale through the Carlos Imaging storefront on Amazon.com. Id. at ¶¶ 3.43-3.44.
(6) Do It Wiser
Do It Wiser is a Delaware limited liability corporation with a principal place of business
at 3422 Old Capital Trail, Suite 747, Wilmington, Delaware 19808. Ex. 5 at ¶ 3.45. Do It Wiser
owns the registered trademark “Do It Wiser” under which it offers for sale toner cartridges through
the imagetoner.com and doitwiser.com websites and through the Do It Wiser storefront on
Amazon.com. Id. at ¶¶ 3.46-3.49.
(7) Eco Imaging
Eco Imaging is a California corporation with a principal place of business at PMB A839,
14252 Culver Drive, Irvine, California 92604. Ex. 5 at ¶ 3.50. Eco Imaging owns the “Cool
Toner” registered trademark and offers for sale Cool Toner-branded toner cartridges through the
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15
website us.cooltoner.com and through the Toner H Party, Office and Warehouse Supplies, and
King Kong storefronts on Amazon.com. Id. at ¶¶ 3.51-3.53.
(8) Ecoolmart
Ecoolmart is a California corporation with a principal place of business at 163 University
Parkway, Pomona, California 91768. Ex. 5 at ¶ 3.55. Ecoolmart owns the registered trademark
“Hi-Vision Hi-Yields” and offers for sale Hi-Vision Hi-Yields-branded toner cartridges through
the “Vision Supplies” storefront on Amazon.com. Id. at ¶¶ 3.57-3.58.
(9) Globest
Globest is a California corporation with a principal place of business at 1251 South
Rockefeller Avenue, Unit B, Ontario, California 91761. Ex. 5 at ¶ 3.59. Globest owns the
registered trademark “InkeSale” and offers for sale InkeSale-branded toner cartridges through its
website inkesale.com and through the ManyCartridges, Limito, Global Toner, and VP6 storefronts
on Amazon.com. Id. at ¶¶ 3.60-3.62.
(10) Greencycle
Greencycle is a California corporation with a principal place of business at 9638 Rush
Street, Unit E, South El Monte, California 91733. Ex. 5 at ¶ 3.63. Greencycle offers for sale
Greencycle-branded toner cartridges through the Quicktoner storefront on Amazon.com. Id. at ¶
3.65.
(11) Hongkong Boze
Hongkong Boze is an entity organized and existing under the laws of Hong Kong with a
principal place of business at Flat/Room A 27/F, Billion Plaza 2, 10 Cheung Yee Street, Lai Chi
Kok, KL Hong Kong 999077. Ex. 5 at ¶ 3.66. Hongkong Boze offers for sale Greensky-branded
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16
toner cartridges through its website greenskytoner.com and through the Fituwork and Greensky
storefronts on Amazon.com. Id. at ¶¶ 3.67-3.69.
(12) I8
I8 is a California corporation with a principal place of business at 19961 Harrison Avenue,
City of Industry, California 91789. Ex. 5 at ¶ 3.71. I8 owns the “Ink4work” registered trademark
and offers for sale Ink4work-branded toner cartridges through the INK4WORK storefront on
Amazon.com. Id. at ¶¶ 3.72-3.73.
(13) Ikong
Ikong is a California corporation with a principal place of business at PMB 429, 385 South
Lemon Avenue, Suite E, Walnut, California 91789. Ex. 5 at ¶ 3.77. Ikong offers for sale IKONG-
branded toner cartridges through the IKONG and Lyc_usa storefronts on Amazon.com. Id. at ¶
3.78.
(14) Intercon
Intercon is a California corporation with a principal place of business at PMB 109, 407
West Imperial Highway, Suite H, Brea, California 92821. Ex. 5 at ¶ 3.82. Intercon owns the
“Arcon” registered trademark and offers for sale Arcon-branded toner cartridges through the
iarcon.com website and through the Arcon storefront on Amazon.com. Id. at ¶¶ 3.83-3.85.
(15) IPrint
IPrint is an entity organized and existing under the laws of Hong Kong located at Rooms
1318-19, 13/F Hollywood Plaza, 610 Nathan Road, Mongkok Kowloon, Hong Kong 999077.
Ex. 5 at ¶ 3.87. IPrint owns the “Toner Bank” registered trademark and offers for sale Toner Bank-
branded toner cartridges through the Toner Bank storefront on Amazon.com. Id. at ¶¶ 3.88-3.89.
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17
(16) LD Products
LD Products is a California corporation with a principal place of business at 3700 Cover
Street, Long Beach, California 90808. Ex. 5 at ¶ 3.96. LD Products owns the “LD” and
“Speedyinks” registered trademarks. Exs. 5 at ¶¶ 3.97, 3.98; 5-121; 5-125. LD Products offers
for sale LD-branded toner cartridges through the website ldproducts.com and the LD Products
storefront on Amazon.com. Exs. 5 at ¶ 3.99; 5-124. LD Products offers for sale Speedyinks-
branded toner cartridges through the Speedy Inks storefront on Amazon.com. Exs. 5 at ¶ 3.101;
5-126.
(17) Mangoket
Mangoket is a California limited liability corporation with a principal place of business at
1641 West Main Street, Suite 222, Alhambra, California 91801. Ex. 5 at ¶ 3.93. Mangoket offers
for sale EPS-branded toner cartridges through the MANGOKET storefront on Amazon.com. Id.
at ¶¶ 3.94.
(18) Solong
Solong is a limited liability company organized and existing under the laws of Hong Kong
with a principal place of business at Flat/Room 19C Lockhart Center 301-307 Lockhart Road, Wan
Chai, Hong Kong 999077. Ex. 5 at ¶ 3.80. Solong offers for sale IKONG-branded toner cartridges
through the ikong-world.com website. Id. at ¶ 3.81.
(19) Smartjet
Smartjet is a limited liability company organized and existing under the laws of Hong Kong
with a principal place of business at Flat/Room A 20/F, Kiu Fu Commercial Building, 300
Lockhart Road, Wan Chai, Hong Kong 999077. Ex. 5 at ¶ 3.115. Smartjet owns the registered
PUBLIC VERSION
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trademark “MIROO” and offers for sale MIROO-branded toner cartridges through the usa-
miroo.com website and through the Linkinc storefront on Amazon.com. Id. at ¶¶ 3.116-3.118.
(20) Super Warehouse
Super Warehouse is a Washington corporation with a principal place of business at 1160
Yew Avenue, DSS-5179, Blaine, Washington 98230. Ex. 5 at ¶ 3.119. Super Warehouse owns
the “Inktoneram” registered trademark and offers for sale Inktoneram-branded toner cartridges on
the super-warehouse.com website and through the Inktoneram storefront on Amazon.com. Id. at
¶¶ 3.120-3.122.
(21) Xiaohui
Xiaohui is an entity organized and existing under the laws of China with a principal place
of business at Room 502, Factory Five, No. 12, Pingdong 3 rd Road, Nanping Keji Industrial Park,
Xiangzhou District, Zhuhai, China 519000. Ex. 5 at ¶ 3.145. Xiaohui owns the registered
trademark “JARBO” and offers for sale JARBO-branded toner cartridges through its website
jarbo-world.com and through the Slsink, TieWrapsNation, and JARBO storefronts on
Amazon.com. Id. at ¶¶ 3.146-3.148.
C. The Technology at Issue
Printers, fax machines, and MFCs use toner cartridges to print images on e.g. paper. Ex. 5
at ¶ 4.1, Cummins Decl. Ex. 6 at ¶ 64. Toner is transferred from the toner cartridge to paper via a
system of electrically charged components. Id. at ¶ 64.
A toner cartridge generally includes a toner hopper, an agitator, a developing chamber, a
supply roller, and a developing roller, as depicted below:
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19
Id. at ¶ 73. Toner is stored in the toner hopper and moved to the supply roller when the agitator
rotates. Id. at ¶ 74. The supply roller and the developing roller include electrodes that charge the
toner with a positive electrostatic charge. Id. at ¶ 77 The charged toner is deposited on a
photosensitive drum in the desired pattern, where it is then transferred onto paper. Id. at ¶¶ 77,
78.
D. The Asserted Patents
As described below, the Asserted Patents are directed to toner cartridges with certain
features, including a detection gear, a supply roller electrode, and a developing roller electrode.
The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a
detection gear. The detection gear enables a compatible printer, fax machine, or MFC to detect
the insertion of a new toner cartridge. Ex. 34 (Declaration of Jarrett Gayne) (hereinafter “Gayne
Decl.”) at ¶ 53. An exemplary detection gear positioned on a side of the toner cartridge is depicted
in the figure below:
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Detection
Gear
MSD at 8.
The asserted claims of the ’456 and ’856 patents are directed to various aspects of a supply
roller electrode and a developing roller electrode. Each type of electrode includes protrusions that
receive electrical biases from contact points of a compatible printer, fax machine, or MFC. Ex. 33
(Declaration of Guerry Grune) (hereinafter “Grune Decl.”) at § 29. The supply roller applies
electrical biases to charge the toner particles and opposite electrical biases on the developing roller
selectively attract and apply toner particles to form printed images. /d. at fj] 30, 31. Examples of
supply roller and developing roller electrodes positioned on the side of the toner cartridge are
depicted in the figure below:
20
21
MSD at 9.
E. The Domestic Industry Products
Brother offers five lines of toner cartridges for sale in the United States that it claims utilize
the claimed technology of the Asserted patents: the “DCL,” “ECL,” “BLL,” “DLL,” and “ELL”
lines (collectively the “Covered Cartridges”). Cummins Decl. ¶¶ 81-106. The toner cartridges in
Brother’s DCL line are identified with model numbers TN-221BK, TN-221C, TN-221M, TN-
221Y, TN-225C, TN-225M, and TN-225Y (collectively, the “Covered 221/225 Cartridges”). Id.
at ¶¶ 81, 84, 86, 89, 97, 102. The toner cartridges in Brother’s ECL line are identified with model
numbers TN-223BK, TN-223C, TN-223M, TN-223Y, TN-227BK, TN-227C, TN-227M, TN-
227Y (collectively, the “Covered 223/227 Cartridges”). Id. at ¶¶ 82, 85, 87, 90, 98, 103. The
toner cartridges in Brother’s BLL line are identified with model numbers TN-420 and TN-450
(collectively, the “Covered 420/450 Cartridges”). Id. at ¶¶ 82, 88, 91, 99, 104. The toner cartridges
in Brother’s DLL line are identified with model numbers TN-630 and TN-660 (collectively, the
“Covered 630/660 Cartridges”). Id. at ¶¶ 82, 88, 92, 100, 105. And toner cartridges in Brother’s
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22
ELL line are identified with model numbers TN-730, TN-760, and TN-770 (collectively, the
“Covered 730/760/770 Cartridges”). Id. at ¶¶ 82, 82, 88, 93, 101, 106.
Within each product line, Brother’s toner cartridges are identical to each other in all
respects relevant to this investigation. Id. at ¶¶ 89, 90, 91, 92, 93. The primary difference between
the toner cartridges in the DCL and ECL lines is that the model numbers with “BK,” “C,” “M,”
and “Y” suffixes hold black, cyan, magenta, and yellow toner, respectively, and the toner
cartridges with higher model numbers (e.g., TN-225C) are filled with more toner than those with
lower model numbers (e.g., TN-221C). Id. at ¶¶ 86, 87, 89, 90. The toner cartridges with higher
model numbers in the BLL, DLL, and ELL lines also are filled with more toner than those with
lower model numbers, but all model numbers within the BLL, DLL, and ELL lines are filled with
black toner. Id. at ¶¶ 88, 91, 92, 93.
Brother’s DCL, ECL, BLL, DLL, and ELL product lines also include compatible printers,
fax machines, and MFCs with corresponding model numbers (“Related Products”).
F. The Accused Products
Brother has defined the products accused in this investigation as toner cartridges designed
to be compatible with Brother’s printers, fax machines and MFCs in the DCL, ECL, BLL, DLL,
and ECL lines of products. See, e.g., Ex. 5 at ¶¶ 1.3-1.5, 4.1; 84 Fed. Reg. 49762. The products
identified by Brother include toner cartridges marketed as substitutes for Brother’s TN-221BK,
TN-221C, TN-221M, TN-221Y, TN-225C, TN-225M, and TN-225Y toner cartridges
(collectively, the “Accused 221/225 Cartridges”); Brother’s TN-223BK, TN-223C, TN- 223M,
TN-223Y, TN-227BK, TN-227C, TN-227M, TN-227Y toner cartridges (collectively, the
“Accused 223/227 Cartridges”); Brother’s TN-420 and TN-450 toner cartridges (collectively, the
“Accused 420/450 Cartridges”); Brother’s TN-630 and TN-660 toner cartridges (collectively, the
“Accused 630/660 Cartridges”); and Brother’s TN-730, TN-760, and TN-770 toner cartridges
PUBLIC VERSION
PUBLIC VERSION
(collectively, the “Accused 730/760/770 Cartridges”). Ex. 5 at §J 9.32; Exs. 5-18, 5-22, 5-36,
5-41, 5-47, 5-59, 5-66, 5-71, 5-77, 5-81, 5-87, 5-91, 5-99, 5-106, 5-108, 5-117, 5-124, 5-126,
5-151, 5-156, 5-186 (various Amazon.com storefronts offerig accused products as “compatible”
Brother toner cartridges); Cummins Decl. at § 96.
The following table shows the brand names under which each of Respondents sells one or
more of the Accused 221/225, 223/227, 420/450, 630/660, or 730/760/770 Cartridges
(collectively, the “Accused Products”) in the United States.
Respondent(s) Brand(s) Record Citations
AMI Arthur Imaging Ex. 5 at ¥ 3.9, 3.11, 7.6;
Exs. 5-16, 5-18; Ex. 35 at §
3.11, AMI Import. Stip. at § 8
An An Beauty CMYBabee Ex. 5 at 3.13, 3.15, 7.8;
Exs. 5-19, 5-22, 5-224
Arcon, Aster and Brother’s Joint
Aster Aztech, Stipulation as to Importation at
CMYBabee, 4] 6 (Jan. 30, 2020) (EDIS Doc.
Cool Toner, ID 700726) (hereinafter “Aster
EPS, Import. Stip.”’);
Greensky, Ex. 38 at ¥ 3.26
Ink4 Work,
Toner Bank
Aztech Aztech Ex. 5 at § 3.31, 3.34, 7.29;
Exs. 5-32, 5-36, 5-239
Billiontree Toner Kingdom Ex. 5 at § 3.37, 3.39, 7.36;
Exs. 5-39, 5-41, 5-241
Carlos Imaging Green Toner Supply/GTS Ex. 5 at § 3.42, 3.44, 7.38;
Exs. 5-45, 5-47, 5-243
Do It Wiser Do It Wiser Ex. 5 at § 3.46, 3.49, 7.40;
Exs. 5-51, 5-59, 5-245
Eco Imaging Cool Toner Ex. 5 at § 3.51, 3.53, 7.42;
Exs. 5-5-64, 5-66, 5-247
Ecoolmart Hi-Vision Hi-Yield Ex. 5 at § 3.57, 3.58, 7.49;
Exs. 5-70, 5-71, 5-249
Globest InkeSale Ex. 5 at § 3.60, 3.62, 7.51;
Exs. 5-74, 5-77, 5-251;
Ex. 39 at ¥ 3.60;
Globest and Brother’s Joint
Stipulation as to Importation at
46 (Jan. 27, 2020) (EDIS Doc.
23
24
ID 700411) (“Globest Import.
Stip.”)
Greencycle Greencycle Ex. 5 at ¶ 3.64, 3.65, 7.53;
Exs. 5-80, 5-81, 5-253
Honkong Boze Greensky Ex. 5 at ¶ 3.67, 3.69, 7.55;
Exs. 5-84, 5-87,5-255
I8 Ink4work Ex. 5 at ¶ 3.72, 3.73, 7.60;
Exs. 5-90, 5-91, 5-257
Ikong and Solong Ikong Ex. 5 at ¶ 3.75, 3.78, 3.81, 7.64;
Exs. 5-95, 5-99, 5-100, 5-261
Intercon Arcon Ex. 5 at ¶ 3.83, 3.85, 7.66;
Exs. 5-104, 5-106, 5-263
IPrint Toner Bank Ex. 5 at ¶ 3.88, 3.89, 7.73;
Exs. 5-107, 5-108, 5-264
Mongoket EPS Ex. 5 at ¶ 3.91, 3.94, 7.78;
Exs. 5-109, 5-117, 5-265
LD Products LD Products,
Speedyinks
Ex. 5 at ¶ 3.97, 3.99, 3.100,
3.101, 7.82;
Exs. 5-121, 5-124, 5-125, 5-126,
5-267, 5-269
Smartjet MIROO Ex. 5 at ¶ 3.116, 3.118, 7.90;
Exs. 5-147, 5-151, 5-277
Super Warehouse Inktoneram Ex. 5 at ¶ 3.120, 3.122, 7.92;
Exs. 5-154, 5-156, 5-279
Xiaohui JARBO Ex. 5 at ¶ 3.146, 3.148, 7.102;
Exs. 5-183, 5-186, 5-289
Multiple brands are associated with Aster because Aster is the supplier of Accused
Products to An An Beauty, Aztech, Eco Imaging, Hong Kong Boze, I8 International, Intercon,
IPrint, and Mangoket. Aster Import. Stip. at ¶ 3, Ex. A.
Brother’s experts grouped the Accused Products into three groups of products based on
features in the claims of the Asserted Patents. Those product groups are described below.
1. Accused Group 1 Products
Brother alleges that Respondents’ toner cartridges designed as substitutes for Brother’s
TN-221BK, TN-221C, TN-221M, TN-221Y, TN-223BK, TN-223C, TN-223M, TN-223Y, TN-
225C, TN-225M, TN-225Y, TN-227BK, TN-227C, TN-227M, and TN-227 toner cartridge
models (collectively, “Accused Group 1 Products”) infringe the following claims of the ’093 and
’460 patents (collectively, “Asserted Group 1 Patents”):
PUBLIC VERSION
PUBLIC VERSION
Asserted Patent Asserted Claims
°093 patent 1-5, 10, & 12-15
460 patent 1, 7-11, 15, & 16
Ex. 5 at § 1.3.
Brother avers that accused TN-225—compatible models are representative of the accused
TN-221—compatible models and that the accused TN-227—compatible models are representative
of the accused TN-223—compatible models.? AMI, E-Z Ink, Linkyo, and Globest agreed that their
TN-225C-—compatible toner cartridges are representative of their TN-225— and TN-221-
compatible toner cartridges. AMI, E-Z Ink, Cartridge Evolution, and Globest also agreed that
their compatible TN-227C toner cartridges are representative of their compatible TN-227 and TN-
223 toner cartridges. AMI Import. Stip. at § 17, Ex. A; E-Z Ink Import. Stip. at § 14, Ex. A; Brother
and Cartridge Evolution’s Joint Stipulation as to Importation (“Cartridge Evolution Import. Stip.”)
at § 12, Ex. A (Feb. 3, 2020) (EDIS Doc. ID 701213); Globest Import. Stip. at § 15, Ex. A.
Based on this, Brother’s expert, Jarrett Gayne, identified the Accused Group 1 Products by
> See Ex. 5 at 99 6.11-6.19, 6.23-6.26 (Arthur Imaging), §§ 6.34-6.37 (CMYBabee), §§] 6.47-6.50
(Aztech), §f] 6.59-6.62 (Green Toner Supply), {J 6.64-6.67, 6.74-6.77 (Do It Wiser), §§ 6.79-
6.86, 6.93-6.96 (Cool Toner), Ff 6.98-6.101, 6.108-6.111 (Hi-Vision Hi-Yields), J 6.113-6.120,
6.127-6.130 (InkeSale), ff 6.132-6.139, 6.146-6.149 (Greencycle), {J 6.157-6.160 (Greensky),
{J 6.162-6.165, 6.172-6.175 (Ink4work), ff 6.177-6.180 IKONG), §§ 6.188-6.190, 6.198-6.201
(Arcon), §¥ 6.203-6.209, 6.217-6.220 (Toner Bank), § 6.222 (Mangoket), § 6.241-6.243, (LD),
{J 6.244-6.253 (Speedyinks), 49 6.266-6.269, 6.276-6.279 (Linkyo), J 6.297-6.300
(Inktoneram), §J 6.305-6.307, (Inktoneram) 6.315-6.318 (LxTek), §§ 6.339-6.345, (v4ink), §§
6.353-6.356 (EZink), {§ 6.358-6.364, (EZink), J§ 6.372-6.375, 6.377-6.379, (JARBO).
3 AMI and Brother’s Joint Stipulation as to Importation (“AMI Import. Stip.”) at § 16, Ex. A
(Jan. 22, 2020) (EDIS Doc. ID 699881): E-Z Ink and Brother’s Joint Stipulation as to
Importation (“E-Z Ink Import. Stip.”’) at § 13, Ex. A (Jan. 22, 2020) (EDIS Doc. ID 699885);
Linkyo and Brother’s Joint Stipulation as to Importation (“Linkyo Import. Stip.”) at § 17, Ex. A
(Jan. 23, 2020) (EDIS Doc. ID 700057); Globest Import. Stip. at § 14, Ex. A.
25
26
TN-225 and TN-227–compatible brands, as shown below.4,5
Gayne Decl. at ¶ 4.
2. Accused Group 2 Products
Brother alleges that Respondents’ toner cartridges designed as substitutes for Brother’s
TN-420, TN-450, TN-630, TN-660, TN-730, TN-760, and TN-770 toner cartridges (collectively,
“Accused Group 2 Products”) infringe the following claims of the ’856 and ’456 patents
4 Aster supplies Accused Products to Eco Imaging, I8, Intercon, and IPrint. Aster and Brother’s
Joint Stipulation as to Importation at ¶ 6 (Jan. 30, 2020) (EDIS Doc. ID 700726) (“Aster Import.
Stip.”).
5 Brother and Aster stipulated that the Arcon-branded TN-225C compatible toner cartridge and
the Arcon-branded TN-227C compatible toner cartridge are each “representative of all such
compatible toner cartridges.” Aster Import. Stip. at ¶¶ 10-11.
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PUBLIC VERSION
(collectively, “Asserted Group 2 Patents”):
Asserted Patent Asserted Claims
856 patent 1-7,9
°456 patent 1,4,5,9
Ex. 5 at ¥ 1.4.
In its complaint, Brother avers that the TN-450—compatible models are representative of
the TN-420—compatible models, the TN-660—compatible models are representative of the TN-
630—compatible model, and the TN-760—compatible models are representative of the TN-730— and
TN-770-compatible models.® E-Z Ink, Linkyo, Cartridge Evolution, and Globest agreed that their
Brother TN-450—compatible toner cartridges are representative of their Brother-compatible TN-
420 and TN-450 toner cartridges. E-Z Ink Import. Stip. at § 15, Ex. A; Linkyo Import. Stip. at §
18, Ex. A; Cartridge Evolution Import. Stip. at § 13, Ex. A; Globest Import. Stip. at § 16, Ex. A.
Additionally, AMI, E-Z Ink, Linkyo, Cartridge Evolution, and Globest agreed that their Brother
TN-660—compatible toner cartridges are representative of their Brother-compatible TN-630 and
TN-660 toner cartridges. AMI Import. Stip. at § 18, Ex. A; E-Z Ink Import. Stip. at § 16, Ex. A;
Linkyo Import. Stip. at § 19, Ex. A; Cartridge Evolution Import. Stip. at § 14, Ex. A; Globest
Import. Stip. at § 17, Ex. A. The same respondents also agreed that their Brother TN-760—
compatible toner cartridges are representative of their Brother-compatible TN-730, TN-760, and
TN-770 toner cartridges. AMI Import. Stip. at § 19, Ex. A; E-Z Ink Import. Stip. at § 17, Ex. A;
® See Ex. 5 at J§ 6.211, 6.214, 6.217 (Toner Bank); 4 6.121, 6.124, 6.127 (InkeSale); §¥ 6.270,
6.273, 6.276 (New Era Toner); §§ 6.366, 6.369, 6.372 (Jarbo); F§ 6.347, 6.350, 6.353 (EZink); 4
7.36, 7.37 (Toner Kingdom); §§ 6.87, 6.90, 6.93 (Cool Toner); 9 6.151, 6.154, 6.157
(Greensky); Ff 6.192, 6.195, 6.198 (Arcon); 4 6.234, 6.237 (LD); § 6.301 (Inktoneram); 4J
6.309, 6.312, 6.315 (LxTek); 4 6.68, 6.71, 6.74 (Do It Wiser); ff 6.245, 6.248, 6.251
(Speedyinks); §§ 6.259, 6.262 (LINKYO); ff 6.166, 6.169, 6.172 (Ink4work); §§ 6.102, 6.105,
6.108 (Hi-Vision Hi-Yields); §§ 6.140, 6.143, 6.146 (Greencycle); J 6.41, 6.44, 6.47 (Aztech);
J 6.28, 6.31,6.34 (CMYBabee):.
27
28
Linkyo Import. Stip. at ¶ 20, Ex. A; Cartridge Evolution Import. Stip. at ¶ 15, Ex. A; Globest
Import. Stip. at ¶ 18, Ex. A.
Based on this, Brother’s expert, Guerry Grune, identified the Accused Group 2 Products
by TN-450, TN-660, and TN-760 compatible brands, as shown below.7,8,9
7 Dr. Grune included in his chart respondents and products that have been terminated from this
investigation, such as Linkyo and V4ink. Ex. 33 at 38. I have omitted those respondents and
products here.
8 Aster supplies Accused Products to An An Beauty, Aztech, Carlos Imaging, Eco Imaging,
Hongkong Boze, I8, Intercon, IPrint, and Mangoket. Aster Import. Stip. at ¶ 6.
9 Brother and Aster stipulated that the Arcon-branded TN-450 compatible toner cartridge, the
Arcon-branded TN-660 compatible toner cartridge, and the Arcon-branded TN-760 compatible
toner cartridge are each “representative of all such compatible toner cartridges.” Aster Import.
Stip. at ¶¶ 12-14.
PUBLIC VERSION
PUBLIC VERSION
Grune Decl. at § 38.
3. Accused Group 3 Products
Brother alleges that Respondents’ toner cartridges designed as substitutes for Brother’s
TN-221BK, TN-221C, TN-221M, TN-221Y, TN-223BK, TN-223C, TN-223M, TN-223Y,
TN-225C, TN-225M, TN-225Y, TN-227BK, TN-227C, TN-227M, TN-227Y, TN-730, TN-760,
and TN-770 toner cartridges (collectively, “Accused Group 3 Products”) infringe the following
claims of the ’387 patent (“Asserted Group 3 Patent”):
Asserted Patent Asserted Claims
°387 patent 1, 3,5, 7-12, & 18
Ex. 5 at ¥ 1.5.
In view of Brother’s contentions about representative models, discussed above, Jarrett
Gayne identified the Accused Group 3 Products by TN-225, TN-227, and TN-760 compatible
brands, as shown below.
29
30
Gayne Decl. at ¶ 5.
4. Representative Products
Brother’s experts, Mr. Gayne and Dr. Grune, evaluated each of the Accused Products
individually and thoroughly and both determined that many of the products are functionally
identical for purposes of analyzing infringement of the asserted patents. Grune Decl. at ¶ 40;
Gayne Decl. at ¶ 8. In line with those conclusions, both experts divided the Accused Products
according to “type” and provided separate infringement analyses for each Accused Product type.
MSD App’x B (cross-reference to claim charts for each product accused of infringing the ’093
patent), MSD App’x C (same for ’460 patent), MSD App’x D (same for ’856 patent). MSD App’x
PUBLIC VERSION
PUBLIC VERSION
E (same for ’456 patent), MSD App’x F (same for ’387 patent). According to Mr. Gayne and Dr.
Grune’s analyses, “the accused products within the same ‘type’ are identical to one another in all
respects.” Gayne Decl. at § 8. Each expert deemed any differences among models of the same
type to be insignificant unless separately addressed in their analysis. Gayne Decl. at § 8; Grune
Decl. at § 40.
Mr. Gayne grouped the Accused Group 1 and Accused Group 3 Products as follows:!!
Accused TN-225 Product Types
Type Represented Products Representative Product
Type-A_ | Do It Wiser-, Hi-Vision Hi-Yield-, MIROO- | Arthur Imaging-branded
, Inktoneram-, EZink-, and Arthur Imaging- TN-225
branded TN-225 compatible toner cartridges
Type-B Arcon-, Toner Bank, and Cool Toner- Arcon-branded TN-225
branded TN-225 compatible toner cartridges
Type-C V4Ink-, InkESale-, and Office World — V4Ink-branded TN-225
branded TN-225 compatible toner cartridges
Type-D Greencycle, Ink4Work-, Ikong-, and Greencycle-branded TN-
JARBO- branded TN-225 compatible toner 225
cartridges
Type-E LD Products-, SpeedInks-, Linkyo-branded | Linkyo-branded TN-225
TN-225 compatible toner cartridges
10 Dr. Grune stated that “the accused products within the same ‘type’ are structurally identical to
one another in all respects.” Grune Decl. at § 40.
11 Tn the Accused TN-225 Product Types chart provided by Brother, the listed Office World-
branded toner cartridges were sold by IFree. Ex. 5 at §§ 6.177-6.180. Brother withdrew its
complaint as to [Free and, as a result, I do not include IFree products in the accused product
charts reproduced here. See Order No. 32.
31
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Accused TN-227 Product Types
Type Represented Products Representative Product
InkESale-, Greencycle-, V4ink-, and Arthur Arthur Imaging-branded
Type-A Imaging-branded TN-227 compatible toner TN.227.
cartridges
Arcon- and Cool Toner-branded TN-227
Type-B compatible toner cartridges Arcon-branded TN-227
Type-C EZink-branded TN-227 compatible toner EZink-branded TN-227
cartridge
Accused TN-760 Product Types
Type Represented Products Representative Product
Arthur Imaging,- JARBO-, Ikong-, Hi-Vision ;
Type-A Hi-Yields-, and InkESale-branded TN-760 ae jmaene branded
compatible toner cartridges
Eco Imaging- [Cool Toner], Greensky-,
Inktoneram-, Neweratoner- [Not Accused], LD
Type-B Products-, Greencycle-, Do it Wiser-, GT5-, Eink-branded TN-760
F#ink-, and Linkyo-branded TN-760 compatible
toner cartridges
Arcon-, Toner Bank-. Ink4Work-, Aztech-, and
Type-C CMYBabee-branded TN-760 compatible toner | Arcon-branded TN-760
cartridges
Type-D V4ink-branded TN-760 compatible toner \V4ink-branded TN-760
cartridge
Gayne Decl. at ¥ 9.
Dr. Grune grouped the Accused Group 2 Products as follows:
TN-450 Accused Product Types
Type Represented Products Representative Product
InkeSale-, EZink-, V4ink, CMYBabee-, Do it
Wiser-, Greencycle-, Greensky-, High-Vision ; 7
Type-l High-Yields-, IKONG-, Ink4work-, Inktoneram- aucesale branded TN
, Jarbo-, Toner Eingdom-, and MIROO-branded °
TN-450 compatible toner cartridges
Arcon-, Aztech-, and Cool Toner-branded TN-
me? : 7 ! -
Type-2 430 compatible toner cartridges Arcon-branded TN-450
; Linkyo- and LD Products-branded TN-450 4 ~ 4c
Type-3 compatible toner cartridges Linkyo-branded TN-450
Type-4 EPS-branded TN-450 compatible toner EPS-branded TN-450
cartridges
32
33
Grune Decl. at ¶ 41.
The conclusions that Dr. Grune and Mr. Gayne drew about representative products are
based on their careful examination of each Accused Product model. No evidence contradicts their
findings or their conclusions about representative products. I therefore conclude that the products
identified in the charts above are representative of the other products indicated at least so far as is
material to the patent claims around which Dr. Grune and Mr. Gavne organized their respective
analyses.
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5. Newly Designed Products
During the course of the investigation, respondents AMI, Cartridge Evolution, E-Z Ink,
Globest, and Linkyo introduced certain newly designed toner cartridges (“Newly Designed
Products”) as replacements for the initially Accused Products (“Original Design Products”). See
Brother and AMI Joint Stipulation as to Original and Newly Designed Products at pp. 1-2 (Feb. 3,
2020) (EDIS Doc. ID 701193); Brother and Cartridge Evolution Joint Stipulation as to Original
and Newly Designed Products at pp. 1-2 (Feb. 3, 2020) (EDIS Doc. ID 701213); Brother and E-Z
Ink Joint Stipulation as to Original and New Designed Products at pp. 1-2 (Feb. 3, 2020) (EDIS
Doc. ID 701191); Brother and Globest Joint Stipulation as to Original and Newly Designed
Products at pp. 1-4 (Feb. 7, 2020) (EDIS Doc. ID 701816); Brother and Linkyo Joint Stipulation
as to Original and Newly Designed Products at pp. 1-4 (Feb. 7, 2020) (EDIS Doc. ID 701890).
Brother stipulated that it would not accuse the Newly Designed Products of infringement in this
investigation. See Brother and AMI Joint Stipulation as to Original and Newly Designed Products
at ¶¶ 2-3, 12-14; Brother and Cartridge Evolution Joint Stipulation as to Original and Newly
Designed Products at ¶¶ 2-3, 13-15; Brother and E-Z Ink Joint Stipulation as to Original and New
Designed Products at ¶¶ 2-3, 13-15; Brother and Globest Joint Stipulation as to Original and Newly
Designed Products at ¶¶ 2-3, 13-15; Brother and Linkyo Joint Stipulation as to Original and Newly
Designed Products at ¶¶ 2-3, 12-14. Accordingly, I do not find that any of the Newly Designed
Products infringe any of the Asserted Patents.
II. JURISDICTION & IMPORTATION
A. Subject Matter Jurisdiction
Section 337 confers subject matter jurisdiction on the Commission to investigate, and if
appropriate, to provide a remedy for, unfair acts and unfair methods of competition in the
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importation of articles into the United States and the sale of such articles. See 19 U.S.C.
§§ 1337(a)(1)(B) and (a)(2). Brother filed a complaint alleging a violation of section 337, and the
Commission has subject matter jurisdiction over the complaint. See Amgen, Inc. v. Int’l. Trade
Comm’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990).
B. Personal Jurisdiction
No party has contested personal jurisdiction. By appearing and participating in the
investigation, Aster has consented to personal jurisdiction. See, e.g., Certain Pocket Lighters, 337-
TA-1142, ID at 12 (Feb. 12, 2020) (EDIS Doc. ID 706458) (Public Version), unreviewed in
pertinent part, 85 Fed. Reg. 23528 (EDIS Doc. ID 709087). The Commission has personal
jurisdiction over Defaulting Respondents AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco
Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Intercon, LD Products, Mangoket, Super
Warehouse because they are companies located within the United States. See 19 U.S.C. § 1333(b);
U.S. Int’l Trade Comm’n v. ASAT, Inc., 411 F.3d 245, 246 (D.C. Cir. 2005) (“section 333(b) of the
Tariff Act of 1930 authorizes nationwide service of process”); Certain Pocket Lighters, ID at 12,
unreviewed in pertinent part, 85 Fed. Reg. 23528 (EDIS Doc. ID 709087). The Commission has
personal jurisdiction over the remaining Defaulting Respondents as a result of their intentional and
systematic contacts with the United States. See infra part II.D; see also Certain Pocket Lighters,
ID at 12-13.
C. In Rem Jurisdiction
No party has contested the Commission’s in rem jurisdiction over the accused products.
Accordingly, I have determined the Commission has in rem jurisdiction over the Accused
Products. See 19 U.S.C. § 1337 (d); Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985–
86 (C.C.P.A. 1981) (the Commission has jurisdiction over imported goods).
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D. Importation
A single importation of an accused product is sufficient to satisfy the importation
requirement of section 337. Certain Trolley Wheel Assemblies, Inv. No. 337-TA-161, Comm’n
Op. at 7–8, USITC Pub. No. 1605 (Nov. 1984) (deeming the importation requirement satisfied by
the importation of a single product of no commercial value). Brother submitted unrebutted
evidence showing the Accused Products sold by each the Defaulting Respondents were imported.
Additionally, Brother and Aster entered into a Joint Stipulation as to Importation where Aster
stipulated to importation of the products it sold itself and distributed to others. A review of the
importation evidence follows.
AMI
On January 22, 2020, Brother and AMI stipulated that at least one unit of each of certain
TN-221, TN-225, TN-227, TN-660 and TN-760 toner cartridges (collectively, “Accused AMI
Products”) “has been imported into the United States and/or sold for importation into the United
States within the meaning of 19 U.S.C. § 1337(a)(1)(B) by
AMI and Brother’s Joint Stipulation as to
Importation (“AMI Import. Stip.”) at ¶ 3, Ex. A (Jan. 22, 2020) (EDIS Doc. ID 699881)
Additionally, AMI stipulated that it “has sold after importation into the United States
within the meaning of 19 U.S.C. 1337(a)(1)(B) at least one unit of each of the Accused AMI
Products through www.Amazon.com and/or www.ArthurImaging.com.” Id. at ¶ 8.
The accused Arthur Imaging-branded, Brother-compatible toner cartridges have been
purchased from Amazon.com and shipped to a United States address. Ex. 5 at ¶ 7.6; Ex. 5-222.
The purchased toner cartridges were marked “Made in China.” Ex. 5 at ¶ 7.7; Ex. 5-223.
I find that the foregoing unrebutted evidence shows that the accused AMI products have
been imported into the United States and that AMI sold those products after importation.
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An An Beauty
Brother provided evidence showing that An An Beauty sells within the United States after
importation from China toner cartridges under the brand name “CMYBabee.”
An An Beauty is located in China and established the brand “CMYBabee” to provide
printing supplies, as shown below.
See Amended Complaint Ex. 5-20; see also Ex. 5-19 (Trademark registration for CMYBabee).
CMYBabee-branded, Brother-compatible TN-450, TN-660, and TN-760 toner cartridges
have been purchased from Amazon.com and shipped to a United States address. See Ex. 5-224.
For example, Brother purchased through Amazon a CMYBabee-branded TN-450 toner cartridge
three pack on February 19, 2019, that was delivered to a Washington, DC, address. Id. at 2-5.
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Id. at 2.
CMYBabee-branded toner cartridges that Brother ordered were labeled “Made in China.”
Ex. 5-225.
Id. at 1.
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Further, Aster admitted that it imports certain accused toner cartridges and sells them to
An An Beauty. See Aster Response to Complaint at ¶ 3.26 (Oct. 18, 2019) (EDIS Doc. ID 691633)
(“Aster Response to Complaint”).
I find that the foregoing unrebutted evidence shows that the accused An An Beauty
products have been imported into the United States and that An An Beauty sold those products
after importation.
Aster
On January 30, 2020, Aster stipulated that “it has imported into the United States and/or
sold for importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B), at
least one unit of each of” its Brother-compatible TN-221, TN-223, TN-225, TN-227, TN-420, TN-
450, TN-630, TN-660, TN-730, TN-760, and TN-770 toner cartridges (collectively, “the Accused
Aster Products”). Aster Import. Stip. at ¶ 3, Ex. A.
Further, Aster stipulated that “it has sold after importation into the United States within the
meaning of 19 U.S.C. 1337(a)(1)(B) at least one unit of the Accused Aster Products through
www.Aster-USA.com and www.GoAster.com.” Id. at ¶ 6. Additionally, Aster admitted that it
“imports into the U.S., sells for importation and/or sells within the U.S. after importation certain
Accused Cartridges to An An Beauty; Aztech; Eco Imaging; EPS; Hong Kong Boze; I8
International; Intercon; IPrint; and Mangoket.” Aster Response to Complaint at ¶ 3.26.
Accused Arcon-branded, Aztech-branded, CMYBabee-branded, Cool Toner-branded,
EPS-branded, Greensky-branded, Ink4work-branded, and Toner Bank-branded, Brother-
compatible toner cartridges sold by Intercon, Aztech, An An Beauty, Eco Imaging, Mangoket,
Hongkong Boze, I8, and IPrint have been purchased from Amazon.com and shipped to a United
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States address. Ex. 5 at ¶¶ 7.11, 7.28; Compl. Exs. 234, 236, 238. Additionally, there is
importation data indicating that Aster imports toner cartridges from China. Compl. Ex. 226.
I find that the foregoing unrebutted evidence shows that Aster has imported the Accused
Aster Products into the United States, and that Aster sold those products for importation and after
importation.
Aztech
Aztech sells within the United States after importation from China Aztech-branded toner
cartridges. Aztech is located in China, as shown by the address provided on aztech-supplies.com.
Compl. Ex. 33.
Id. at 1.
Aztech-branded, Brother-compatible TN-450, TN-660, and TN-760 toner cartridges have
been purchased from Amazon.com and shipped to a United States address. See Compl. Ex. 239.
For example, Brother purchased through Amazon an Aztech-branded TN-450/TN-420 black toner
cartridge two pack on December 18, 2018, that was delivered to a Washington, DC, address. Id.
at 2-5. The seller is listed as “AZ-TECH.” Id.
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Id. at 2.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to
Aztech. Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused Aztech products have
been imported into the United States and that Aztech sold those products after importation.
Billiontree
Billiontree sells for importation from China into the United States Toner Kingdom-branded
toner cartridges. Specifically, Billiontree sells Toner Kingdom-branded toner cartridges on its
website www.billion-tree.com. Compl. Ex. 40.
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Id.
Toner Kingdom-branded, Brother-compatible TN-450, TN-630, and TN-760 toner
cartridges have been purchased from Amazon.com and shipped to a United States address. See
Ex. 5-241. For instance, on November 9, 2018, Brother purchased through Amazon a Toner
Kingdom-branded TN-450 toner cartridge for delivery to a Washington, DC, address. Id. at 2-5.
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Id. at 2.
The Toner Kingdom-branded toner cartridges Brother purchased are labeled “Made in
China.” Ex. 5-242.
Id. at 1.
I find that the foregoing unrebutted evidence shows that the accused Billiontree products
have been imported into the United States and that Billiontree sold those products for importation.
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Carlos Imaging
Carlos Imaging sells after importation into the United States Green Toner Supply-branded
toner cartridges. Brother provided evidence that Carlos Imaging is the owner of the “Green Toner
Supply” registered trademark, which indicates that it is the source of Green Toner Supply-branded
toner cartridges. Ex. 5-45.
Id.
Green Toner Supply-branded, Brother-compatible TN-760 toner cartridges have been
purchased from Amazon.com and shipped to a United States address. See Ex. 5-243. For instance,
on November 19, 2018, Brother purchased through Amazon two GTS-branded, Brother-
compatible TN-760 toner cartridges for delivery to a Washington, DC, address. Id. at 2-4.
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Id. at 2. The GTS toner cartridge box is labeled “Green Toner Supply” and has a clover design
that is similar to Carlos Imaging’s trademark.
The “GTS” toner cartridge box that Brother received was labeled “Made in china [sic].”
Ex. 5-244.
Id. at 1.
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46
I find that the foregoing unrebutted evidence shows that the accused Carlos Imaging
products have been imported into the United States and that Carlos Imaging sold those products
after importation.
Do It Wiser
Do It Wiser sells after importation into the United States Do It Wiser-branded toner
cartridges. Specifically, Do It Wiser-branded, Brother-compatible TN-221/225, TN-450/420,
TN-660/630, and TN-760/730 toner cartridges have been purchased from Amazon.com and
shipped to a U.S. address. See Ex. 5-245. For example, on April 17, 2019, Brother purchased Do
It Wiser-branded, Brother-compatible TN 221/225 toner cartridges from Amazon.com for delivery
to a Washington, DC, address. Id. at 2-5.
Id. at 2.
Further, Do It Wiser-branded, Brother-compatible toner cartridges Brother purchased were
labeled “Made in China.” Ex. 5-246.
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Id. at 1.
I find that the foregoing unrebutted evidence shows that the accused Do It Wiser products
have been imported into the United States and that Do It Wiser sold those products after
importation
Eco Imaging
Eco Imaging sells within the United States after importation Cool Toner-branded toner
cartridges. Eco Imaging owns the “Cool Toner” registered trademark, which indicates that Eco
Imaging is the source of Cool Toner-branded toner cartridges. See Ex. 5-64.
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48
Id. The TESS information lists the registrant as “Eco Imaging Inc. DBA Cool Toner,” which
further suggests that Eco Imaging is the source of Cool Toner-branded toner cartridges. Id.
Cool Toner-branded, Brother-compatible TN-221/225, TN-223/227, TN-450,
TN-630/660, and TN-730/760 toner cartridges have been purchased from Amazon.com and
shipped to a United States address. See Ex. 5-247. For example, on April 17, 2019, Brother
purchased Cool Toner-branded, Brother-compatible TN-225 toner cartridges from Amazon.com
for delivery to a Washington, DC, address. Id. at 2-5.
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49
Id. at 2.
The Cool Toner-branded, Brother-compatible toner cartridges were shipped with labels
stating that they were “Made in China.” Ex, 5-248.
Id. at 1.
Moreover, Aster admitted that it imports certain accused toner cartridges and sells them to
Eco Imaging. Aster’s Response to Complaint at ¶ 3.26.
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50
I find that the foregoing unrebutted evidence shows that the accused Eco Imaging products
have been imported into the United States and that Eco Imaging sold those products after
importation
Ecoolmart
Ecoolmart sells after importation into the United States Hi-Vision Hi-Yields-branded toner
cartridges. “HI-VISION HI-YIELDS” is registered trademark is owned by Ecoolmart, which
indicates that Ecoolmart is the source of Hi-Vision Hi-Yields-branded toner cartridges. Ex. 5-70.
Id. at 1.
Hi-Vision Hi-Yields-branded, Brother-compatible toner cartridges have been purchased
from Amazon.com and shipped to a United States address. See Ex. 5-249. For example, Brother
purchased Hi-Vision Hi-Yields-branded, Brother-compatible TN-221/225, TN-450, TN-660, and
TN-760 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id.
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Id. at 2.
The purchased Hi-Vision Hi-Yields-branded, Brother-compatible toner cartridges were
marked “Made in China.” Ex. 5-250.
Id. at 1.
I find that the foregoing unrebutted evidence shows that the accused Ecoolmart products
have been imported into the United States and that Ecoolmart sold those products after importation.
Globest
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On January 27, 2020, Brother and Globest stipulated that at least one unit of each of the
Ink E-Sale-, V4ink-, and Allwork-branded TN-221/TN225, TN-227, TN-450, TN-660, and TN-
760 toner cartridges (“Accused Globest Products”) “has been imported into the United States
and/or sold for importation into the United States within the meaning of 19 U.S.C. § 1337(a)(1)(B)
by Globest and Brother’s Joint Stipulation as to
Importation (“Globest Import. Stip.”) at ¶ 3 (Jan. 27, 2020) (EDIS Doc. ID 700411).
Further, Globest stipulated that “certain Accused Globest Products are sold and offered for
sale in the United States by Globest and its authorized resellers through the ‘Global Toner,’
‘Limito,’ ‘Many Cartridges,’ and ‘Vp6’ storefronts on www.Amazon.com” and that “[o]rders
made through these storefronts are fulfilled using the Fulfillment by Amazon (‘Amazon FBA’)
service.” Id. at ¶ 6. Globest also stipulated that it “has sold after importation into the United States
within the meaning of 19 U.S.C. § 1337(a)(1)(B) at least one unit of each of the Accused Globest
Products through www.Amazon.com.” Id. at ¶ 7.
Brother also provided evidence that accused InkeSale-branded, Brother-compatible toner
cartridges have been purchased from Amazon.com and shipped to a United States address. Ex. 5
at ¶ 7.51; Ex. 5-251. The purchased toner cartridges were marked “Made in China.” Ex. 5 at ¶
7.52; Ex. 5-252.
I find that the foregoing unrebutted evidence shows that the accused Globest products have
been imported into the United States and that Globest sold those products after importation.
Greencycle
Greencycle sells after importation into the United States Greencycle-branded toner
cartridges. Greencycle admitted that “Greencycle-branded toner cartridges sold in the United
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53
States are imported from China.” Greencycle’s Answer to Complaint at ¶ 7.54 (Oct. 21, 2019)
(EDIS Doc. ID 691808).
Further, Greencycle-branded, Brother-compatible TN-225/221, TN-227, TN-450,
TN-630/660, and TN-730/760 toner cartridges have been purchased from Amazon.com and
shipped to a United States address. See Ex. 5-253. For example, on April 17, 2019, Brother
purchased Greencycle-branded, Brother-compatible TN-221/225 toner cartridges from
Amazon.com for shipment to a Washington, DC, address. Id. at 2-5.
Id. at 2.
The Greencycle-branded toner cartridges Brother purchased were labeled “Made in
China.” Ex. 5-254.
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Id. at 2.
I find that the foregoing unrebutted evidence shows that the accused Greencycle products
have been imported into the United States and that Greencycle sold those products after
importation.
Hongkong Boze
Hongkong Boze sells within the United States after importation Greensky-branded toner
cartridges. Hongkong Boze operates the website www.greenskytoner.com and sells and offers for
sale Greensky-branded, Brother-compatible toner cartridges. Compl. Ex. 83. An excerpt from the
website is shown below.
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Id. at 1.
Additionally, Greensky-branded, Brother-compatible TN-420/450, TN-630/660, and
TN-760 toner cartridges have been purchased from Amazon.com and shipped to a U.S. address.
See Ex. 5-255. For example, on November 9, 2018, Brother purchased Greensky-branded,
Brother-compatible TN-450/420 toner cartridges from Amazon.com for shipment to a
Washington, DC, address. Id. at 2-4.
Id. at 2.
The purchased Greensky-branded toner cartridges were labeled “Made in China.” Ex.
5-256.
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Id.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to
Hongkong Boze. Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused Hongkong Boze
products have been imported into the United States and that Hongkong Boze sold those products
after importation.
I8
I8 sells within the United States after importation Ink4work-branded toner cartridges. I8
registered the “Ink4work” trademark, which indicates that I8 is the source of “Ink4work” branded
toner cartridges. Ex. 5-90.
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Id.
Ink4work-branded, Brother-compatible TN-221, TN-450, TN-660/630, and TN-760 toner
cartridges have been purchased on Amazon.com and shipped to a United States address. See Ex.
5-257. For example, on February 19, 2019, Brother purchased ink4work-branded, Brother-
compatible TN-221 toner cartridges from Amazon.com for shipment to a Washington, DC,
address. Id. at 2-5.
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Id. at 2.
The purchased Ink4work-branded toner cartridges were labeled “Made in China.”
Ex. 5-258.
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Id. at 1.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to I8.
Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused I8 products have been
imported into the United States and that I8 sold those products after importation.
Ikong
Ikong sells within the United States after importation IKONG-branded toner cartridges.
Specifically, Brother purchased IKONG-branded, Brother-compatible TN-221, TN-450/420,
TN-660/630, and TN-760 toner cartridges from Amazon.com (sold by IKONG) for shipment to a
U.S. address. Ex. 5-261. For example, on February 19, 2019, Brother purchased IKONG-branded,
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Brother-compatible TN-221 toner cartridges from IKONG on Amazon.com for shipment to a
Washington, DC, address. Id. at 2-5.
Id. at 2.
The purchased IKONG-branded toner cartridges were labeled “Made in China.” Ex. 5-262.
Id. at 1.
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I find that the foregoing unrebutted evidence shows that the accused Ikong products have
been imported into the United States and that Ikong sold those products after importation.
Intercon
Intercon sells within the United States after importation Arcon-branded toner cartridges.
The “Arcon” trademark is registered to Intercon, indicating that Intercon is the source of Arcon-
branded toner cartridges. Ex. 5-104.
Id.
Brother purchased Arcon-branded, Brother-compatible TN-221/225, TN-223/227,
TN-450, TN-660, and TN-760 toner cartridges from Amazon.com for shipment to a United States
address. See Ex. 5-263. For example, on February 19, 2019, Brother purchased Arcon-branded,
Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Arcon) for delivery
to a Washington, DC, address. Id. at 2-5.
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Id. at 2.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to
Intercon. Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused Intercon products have
been imported into the United States and that Intercon sold those products after importation.
IPrint
IPrint sells within the United States after importation Toner Bank-branded toner cartridges.
The “Toner Bank” registered trademark is owned by IPrint, which indicates that IPrint is the source
of Toner Bank-branded toner cartridges. Ex. 5-107.
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Id.
Brother purchased Toner Bank-branded, Brother-compatible TN-221/225, TN-630/660,
and TN-730/760 toner cartridges from Amazon.com for shipment to a United States address. See
Ex. 5-264. For example, on February 19, 2019, Brother purchased Toner Bank-branded, Brother-
compatible TN-221/225 toner cartridges from Amazon.com (sold by Toner Bank) for delivery to
a Washington, DC, address. Id. at 2-5.
PUBLIC VERSION
64
Id. at 2.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to
IPrint. Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused IPrint products have
been imported into the United States and that IPrint sold those products after importation.
LD Products
LD Products sells after importation into the United States LD-branded and
Speedyink-branded toner cartridges.
a. LD-branded
LD Products is the owner of the “LD” registered trademark, which indicates that LD
Products is the source of LD-branded toner cartridges. Ex. 5-121.
PUBLIC VERSION
65
Id.
Brother purchased LD-branded, Brother-compatible TN-221/225, TN-630/660, and
TN-730/760 toner cartridges from Amazon.com for shipment to a United States address. See Ex.
5-267. For example, on February 19, 2019, Brother purchased LD-branded, Brother-compatible
TN-221/225 toner cartridges from Amazon.com (sold by LD Products) for delivery to a
Washington, DC, address. Id. at 2-5.
PUBLIC VERSION
66
Id. at 2.
The purchased LD-branded toner cartridges were labeled “Made in China.” Ex. 5-268.
Id. at 1.
b. Speedyinks-branded
LD Products is also the owner of the “Speedyinks” registered trademark, which indicates
that LD Products is the source of Speedyinks-branded toner cartridges. Ex. 5-125.
PUBLIC VERSION
67
Id.
Additionally, Brother purchased Speedyinks-branded, Brother-compatible TN-221/225,
TN-420/450, and TN-630/660 toner cartridges from Amazon.com for shipment to a United States
address. See Ex. 5-269. For example, on February 19, 2019, Brother purchased Speedyinks-
branded, Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Speedy
Inks) for delivery to a Washington, DC, address. Id. at 2-5.
PUBLIC VERSION
68
Id. at 2.
The purchased Speedyinks-branded toner cartridges were labeled “Made in China.” Ex.
5-270.
Id. at 1.
PUBLIC VERSION
69
c. Conclusion for LD Products
I find that the foregoing unrebutted evidence shows that the accused cartridges sold by LD
Products have been imported into the United States and that LD Products sold those cartridges
after importation.
Mangoket
Mangoket sells after importation into the United States after importation EPS-branded
toner cartridges. Ju Shun Hsueh is either a “manager” or “member” of Mangoket. Ex. 5-113.
Id. at 2. Mr. Hsueh is the owner/registration of the “EPS” registered trademark. Ex. 5-109.
Brother asserts that Mr. Hsueh’s involvement in Mangoket, combined with his ownership of the
EPS trademark, indicates that Mangoket is the source of EPS-branded toner cartridges. No
evidence in the record contradicts this conclusion.
PUBLIC VERSION
70
Id.
Brother purchased EPS-branded, Brother-compatible TN-450 and TN-630/660 toner
cartridges from Amazon.com for shipment to a U.S. address. See Ex. 5-265. For example, on
November 8, 2018, Brother purchased EPS-branded, Brother-compatible TN-450 toner cartridges
from Amazon.com (sold by Mangoket) for delivery to a Washington, DC, address. Id. at 2-5.
PUBLIC VERSION
71
Id. at 2.
The purchased EPS-branded toner cartridges were labeled “Made in China.” Ex. 5-266.
Further, Aster admitted that it imports certain accused toner cartridges and sells them to
Mangoket. Aster’s Response to Complaint at ¶ 3.26.
I find that the foregoing unrebutted evidence shows that the accused Mangoket products
have been imported into the United States and that Mangoket sold those products after importation.
Solong
PUBLIC VERSION
72
Solong sells for importation into the United States Ikong-branded toner cartridges. Solong
is the last listed owner of the “IKONG” registered trademark, which indicates that Solong is the
source of IKONG-branded toner cartridges. Ex. 5-95.
Id.
As discussed above, Brother purchased IKONG-branded, Brother-compatible toner
cartridges labeled “Made in China” from Amazon.com for delivery to an address in the United
States. See Exs. 5-261, 5-262.
PUBLIC VERSION
73
I find that the foregoing unrebutted evidence shows that the accused Solong products have
been imported into the United States and that Solong sold those products for importation.
Smartjet
Smartjet sells for importation into the United States MIROO-branded toner cartridges.
Smartjet is the last known owner of the “MIROO” registered word and design trademarks, which
indicates that Smartjet is the source of MIROO-branded toner cartridges. Ex. 5-147, Compl. Ex.
148.
PUBLIC VERSION
PUBLIC VERSION
Registration
Number
Registration
Date
Owner
Assignment
Recorded
Prior
Registrations
Type of Mark
Register
Live/Dead
Indicator
March 13, 2018
(REGISTRANT) Wang Zhidong INDIVIDUAL CHINA No. 32, Nanpingpingbei First Road Xiangzhou
District, Zhuhai, Guangdong CHINA 519060
(LAST LISTED OWNER) SMARTJET E-COMMERCE CO., LIMITED LIMITED COMPANY (LTD.)
HONG KONG FLAT/RM A 20/F KIU FU COMMERCIAL BLDG 300 LOCKHART ROAD WAN CHAI
HONG KONG
ASSIGNMENT RECORDED
4982075
TRADEMARK
PRINCIPAL
LIVE
Ex. 5-147.
MIKQO
Word Mark
Translations
Goods and
Services
Mark
Drawing
Code
Design
Search Code
Serial
Number
Filing Date
Current
Basis
Original
Filing Basis
MIRGO
The wording "MIROO" has no meaning in a foreign language.
IC 002. US 006 011 016. G & S: Colorants for use in the manufacture of printing ink; Filled ink
cartridges; Filled ink cartridges for printers; Filled ink jet cartridges; Filled toner cartridges; Ink for
multifunction electronic devices for use in copying, printing, scanning, video capture or transmitting
documents and images; Ink jet printer ink; Marking ink for animals; Microencapsulated fragrance inks
for flexographic printing, Photocopier toner in cartridges; Primer oils for printing; Printing
compositions; Printing ink; Printing inks; Printing inks, coatings, pigments and dispersions for use in
the graphic arts industry; Printing inks, coatings, pigments and dispersions for use on cartons and
packaging; Printing lakes; Printing toner, Thermochromic printing inks; Toner; Toner cartridges,
filled, for printers and photocopiers. FIRST USE: 20140925. FIRST USE IN COMMERCE: 20140925
(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
02.11.06 - Beards; Hair; Hair extensions; Human hair, locks of hair, wigs, beards, mustaches;
Mustaches; Toupees; Wigs
09.05.02 - Top hats
86756552
September 15, 2015
1A
1A
April 5, 2016
74
75
Compl. Ex. 148.
Brother purchased MIROO-branded, Brother-compatible TN-221/225 and TN-450 toner
cartridges from Amazon.com for shipment to a United States address. See Ex. 5-277. For
example, on February 19, 2019, Brother purchased MIROO-branded, Brother-compatible TN-
221/225 toner cartridges from Amazon.com for delivery to a Washington, DC, address. Id. at 2-5.
Id. at 2.
PUBLIC VERSION
76
The purchased MIROO-branded toner cartridges were labeled “Made in China.” Ex. 5-278.
Id. at 2.
I find that the foregoing unrebutted evidence shows that the accused Smartjet products have
been imported into the United States and that Smartjet sold those products for importation.
Super Warehouse
Super Warehouse sells after importation into the United States Inktoneram-branded toner
cartridges. Super Warehouse is the owner of the registered “Inktoneram” trademark, and Super
Warehouse also does business as Inktoneram. Ex. 5-152. These facts indicate that Super
Warehouse is the source of Inktoneram-branded toner cartridges.
PUBLIC VERSION
77
Id.
Brother purchased Inktoneram-branded, Brother-compatible TN-221/225, TN-450,
TN-660, and TN-760 toner cartridges from Amazon.com for shipment to a United States address.
See Ex. 5-278. For example, on February 19, 2019, Brother purchased Inktoneram-branded,
Brother-compatible TN-221/225 toner cartridges from Amazon.com (sold by Inktoneram) for
delivery to a Washington, DC, address. Id. at 2-5.
PUBLIC VERSION
78
Id. at 2.
The purchased Inktoneram-branded toner cartridges were labeled “Made in China.”
Ex. 5-280.
PUBLIC VERSION
79
Id. at 1.
I find that the foregoing unrebutted evidence shows that the accused Super Warehouse
products have been imported into the United States and that Super Warehouse sold those products
after importation.
Xiaohui
Xiaohui sells for importation into the United States JARBO-branded toner cartridges.
Xiaohui is the last listed owner of the “JARBO” registered trademark, which indicates that Xiaohui
is the source of JARBO-branded toner cartridges. Ex. 5-183.
PUBLIC VERSION
80
Id.
Brother purchased JARBO-branded, Brother-compatible TN-221/225, TN-450, TN-660,
and TN-760 toner cartridges from Amazon.com for shipment to a United States address. See
Ex. 5-289. For example, on February 19, 2019, Brother purchased JARBO-branded, Brother-
compatible TN-221/225 toner cartridges from Amazon.com (sold by JARBO) for delivery to a
Washington, DC, address. Id. at 2-5.
Id. at 2.
The purchased JARBO-branded toner cartridges were labeled “Made in China.” Ex. 5-290.
PUBLIC VERSION
81
Id. at 1-2.
I find that the foregoing unrebutted evidence shows that the accused Xiaohui products have
been imported into the United States and that Xiaohui sold those products for importation.
E. Standing
The evidence of record demonstrates that Brother (through BIL), as owner of the Asserted
Patents by assignment, has standing to bring its complaint. Ex. 5 at ¶¶ 5.9, 5.24, 5.38; Amended
Complaint Exs. 187, 188, 189, 191 (certified assignment records of Asserted Patents).
Accordingly, I find that Brother has standing in this investigation.
PUBLIC VERSION
82
III. LEGAL PRINCIPLES
A. Domestic Industry
For a patent-based complaint, a violation of section 337 can be found “only if an industry
in the United States, relating to the articles protected by the patent . . . concerned, exists or is in
the process of being established.” 19 U.S.C. § 1337(a)(2). This domestic industry requirement of
section 337 is often described as having an economic prong and a technical prong. InterDigital
Commc’ns, LLC v. Int'l Trade Comm’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013); Certain Stringed
Musical Instruments and Components Thereof, Inv. No. 337-TA-586, USITC Pub. 4120, 2009 WL
5134139 (Dec. 2009), Comm’n Op. at 12-14. The complainant bears the burden of establishing
that the domestic industry requirement is satisfied. See Certain Set-Top Boxes and Components
Thereof, Inv. No. 337-TA-454, ID at 294, 2002 WL 31556392 (June 21, 2002) (unreviewed by
Commission in relevant part).
1. Economic Prong
Section 337(a)(3) sets forth the following economic criteria for determining the existence
of a domestic industry in such investigations:
(3) For purposes of paragraph (2), an industry in the United States
shall be considered to exist if there is in the United States, with
respect to the articles protected by the patent, copyright, trademark,
mask work, or design concerned -
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including
engineering, research and development, or licensing.
Given that the statutory criteria are listed in the disjunctive, satisfaction of any one of them will be
sufficient to meet the economic prong of the domestic industry requirement. See Certain Variable
PUBLIC VERSION
83
Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, USITC Pub. 3003, (Nov.
1996), Comm’n Op. at 15.
2. Technical Prong
The technical prong of the domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents
at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Microsphere Adhesives, Process for Making
Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No.
337-TA-366, Comm’n Op. at 8, USITC Pub. No. 2949, 1996 WL 1056095 (Jan. 16, 1996). “The
test for satisfying the ‘technical prong’ of the industry requirement is essentially [the] same as that
for infringement, i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v.
Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish
by a preponderance of the evidence that the domestic product practices one or more claims of the
patent. It is sufficient to show that the products practice any claim of that patent, not necessarily
an asserted claim of that patent. See Certain Male Prophylactic Devices, Inv. No. 337-TA-546,
Comm’n Op. at 38 (Aug. 1, 2007).
B. Patent Infringement
“An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff’d, 517 U.S. 370 (1996).
To support a finding of infringement, the record must show every element of the asserted patent
or its equivalent in the accused device. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301
(Fed. Cir. 2011).
PUBLIC VERSION
84
In a section 337 investigation, the complainant bears the burden of proving infringement
of the asserted patent claims by a preponderance of the evidence. See Spansion Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard “requires proving that infringement
was more likely than not to have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc.,
418 F.3d 1326, 1341 n.10 (Fed. Cir. 2005).
“When a patentee with the burden of proof seeks summary judgment of infringement, it
must make a prima facie showing of infringement as to each accused device,” not merely assert
that one model of the device is representative of other varying models. L&W, Inc. v. Shertech,
Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006). Expert testimony that one model is sufficiently
representative of other differing models may be sufficient to support an infringement
determination if the testimony explains a reasonable basis for that conclusion. Spansion, Inc. v.
Int’l Trade Comm’n, 629 F.3d 1331, 1351 (Fed Cir. 2010) (expert’s methodology of selecting
representative products that span the range of values for those parameters that most directly affect
the claimed movement was reasonable and well thought out).
IV. DOMESTIC INDUSTRY
I begin with an examination of Brother’s undisputed domestic industry evidence to
illustrate the application to the Asserted Patent claims to the relevant technology.
A. Technical Prong
As noted above, it is Brother’s burden to demonstrate that the Asserted Patents protect
domestic industry articles. See Certain Male Prophylactic Devices, Comm’n Op. at 38. Error!
Reference source not found. below shows the various Brother products alleged to practice claims
of the various Asserted Patents:
PUBLIC VERSION
PUBLIC VERSION
Table 1. Asserted Patents & Their Respective Domestic Industry Products
Asserted Patent Domestic Industry Product(s)” Asserted Claim(s)
, Brother TN-221/225'? & TN-
093 patent 223/227'* toner cartridges 1-5, 10, 12-15
> Brother TN-221/225 & TN-
460 patent 223/227 toner cartridges 1, FIL, 15-16
Brother TN-420/450 & TN- 1-9
; 630/660'° toner cartridges _
856 patent Brother TN-730/760/770"" toner | 4 5 9 o
cartridges 7
Brother TN-420/450 & TN- 1.4.5.8.9
456 patent 630/660 toner cartridges 2 00”
P Brother TN-730/760/770 toner | 1
cartridges
Brother TN-221/225 & TN-
387 patent 223/227 toner cartridges 1,3, 5, 7-12, 18
+ Brother TN-730/760/770 toner
. 1,3, 5, 7-12, 18
cartridges
See MSD at 101. Staff agrees that the unrebutted evidence proffered by Brother “supports finding
that the technical prong of the domestic industry requirement is satisfied for” all Asserted Patents.
Response at 114. I evaluate the evidence below.
As Brother explained, some model numbers include a suffix which indicates which color is in
the cartridge, but the cartridges of a specific model with different colors do not differ in any
relevant aspect. See Cummins Decl. at § 84-87, 89-90.
3 The Brother TN-221 and TN-225 toner cartridges are the same in all relevant aspects. See
Cummins Decl. 81, 84, 86, 89, 97, 102. The only difference between the models is their toner
capacity. Jd. at § 89.
14 The Brother TN-223 and TN-227 toner cartridges are the same in all relevant aspects. See
Cummins Decl. at § 82, 85, 87, 90, 98, 103. The only difference between the models is their
toner capacity. Jd. at § 90.
1° The Brother TN-420 and TN-450 toner cartridges are the same in all relevant aspects. See
Cummins Decl. at § 91. The only difference between the models is their toner capacity. Jd.
16 The Brother TN-630 and TN-660 toner cartridges are the same in all relevant aspects. See
Cummins Decl. at § 92. The only difference between the models is their toner capacity. Jd.
7 The Brother TN-730, TN-760, and TN-770 toner cartridges are the same in all relevant
aspects. See Cummins Decl. at § 93. The only difference between the models is their toner
capacity. Jd.
85
PUBLIC VERSION
1. °093 patent
Brother asserts that its TN-221/225 and TN-223/227 toner cartridges practice the following
claims of the 093 patent:
Asserted patent Domestic Industry Product(s) Asserted Claim(s)
7093 patent Pa eoey tre, “nidaes 1-5, 10, 12-15
See MSD at 101. In support, Brother submitted the Declaration of Jarrett C. Gayne, in which
Mr. Gayne lays out how the Brother TN-225 toner cartridge practices claim 1 of the ’093 patent,
as shown in the table below. See Gayne Decl.
°093 patent, Claim 1 Domestic Industry Chart
Claim 1 Element in Domestic Industry Product
Limitation
The structure of the Product confirms that
it is a toner (developer) cartridge
The packaging of the Product identifies it as a
“toner cartridge,” and toner is a developer
“1. A developing
cartridge
comprising:”!®
ore eae, - = tke
18 T do not hold that the preamble is limiting.
86
PUBLIC VERSION
Claim 1
Limitation
Element in Domestic Industry Product
“a developing
roller rotatable
about a first axis
extending ina
direction, the
developing
roller including
a developing
roller shaft
extending in the
direction, the
developing
roller shaft
having a first
end portion and
a second end
portion
separated from
the first end
portion in the
direction;”
The developing cartridge includes a developing roller that rotates about a first axis, which is
shown with the dashed red line below. The first axis extends in the direction identified by
the dashed red line. The developing roller has first and second end portions that are
separated in the direction.
A second end Developing roller axis Atirctand
portion extending in a direction
portion
“a housing
configured to
accommodate
developing
material therein,
the housing
having a first
outer surface
and a second
outer surface
separated from
the first outer
surface in the
direction;”
The developing cartridge includes a housing that stores toner, which is
one type of developing material. This housing has two outer surfaces that
are separated from each other in the direction
First outer
The direction surface
Second outer
surface
87
PUBLIC VERSION
Claim 1 Element in Domestic Industry Product
Limitation
First outer surface
“a bearing
through which
the first end
portion is
inserted. the The developing cartridge includes a
bearin bein bearing that holds the developing
. g g roller shaft. The first end portion of
positioned to the the developing roller shaft is inserted
first outer through the bearing. The bearing is
surface” located at the first outer surface.
The cover is removed in this view
to expose the first shaft.
“ |
a first shaft The developing cartridge
extending in the includes a first shaft that
EI ye frst shat i psticned First outer
first shaft being | opposite to the bearing a baa
positioned atan | relative to the first outer
. . rface.
opposite side of | *"*
the first outer First shaft
surface relative :
to the bearing” sea
The developing cartridge includes a
coupling that covers and rotates around
the shaft.
“ a
a coupling Coupling
rotatable about
the first shaft”
88
PUBLIC VERSION
Claim 1
Limitation
Element in Domestic Industry Product
“a second shaft
extending in the
direction, the
second shaft
being positioned
to the second
outer surface”
Second outer
surface
The direction
The developing
cartridge
includes a second
shaft that
extends in the
direction. The
second shaft is at
the second outer
surface
“a detection
gear rotatable
about the second
shaft.”
The developing
cartridge includes a
detection gear that
covers and rotates
around the second
shaft. The detection
gear rotates concentric
to the second shaft.
See MSD at 103-13; Gayne Decl. at §] 392-423; see also Gayne Decl. at §] 424-26 (showing
how the Brother TN-225 toner cartridge practices claim 2 of the ’093 patent); id. at §§ 427-29
(showing how the Brother TN-225 toner cartridge practices claim 3 of the ’093 patent); id. at
9] 430-35 (showing how the Brother TN-225 toner cartridge practices claim 4 of the ’093 patent);
id. at §§ 436-45 (showing how the Brother TN-225 toner cartridge practices claim 5 of the ’093
patent); id. at §§ 446-53 (showing how the Brother TN-225 toner cartridge practices claim 10 of
the ’093 patent); id. at {§] 454-56 (showing how the Brother TN-225 toner cartridge practices claim
12 of the 093 patent); id. at {] 457-62 (showing how the Brother TN-225 toner cartridge practices
claim 13 of the ’093 patent); id. at §§] 463-65 (showing how the Brother TN-225 toner cartridge
practices claim 14 of the ’093 patent); id. at §§] 466-69 (showing how the Brother TN-225 toner
cartridge practices claim 15 of the ’093 patent).
89
PUBLIC VERSION
Based on the foregoing substantial and undisputed evidence, I find Brother is entitled to
summary determination that the Brother TN-221/225 and TN-223/227 domestic industry products
practice at least claim 1 of the ’093 patent.
2. °460 patent
Brother asserts that its TN-221/225 and TN-223/227 toner cartridges practice the following
claims of the 460 patent:
Asserted Patent Domestic Industry Product(s) Asserted Claim(s)
> Brother TN-221/225 & TN-
460 patent 223/227 toner cartridges 1, 7-11, 15-16
See MSD at 101. In support, Brother submitted the Declaration of Jarrett C. Gayne, which shows
how the Brother TN-225 toner cartridge practices claim | of the ’460 patent, as shown in the table
belowError! Reference source not found..
°460 patent, Claim 1 Domestic Industry Chart
Claim 1 Limitation Element in Domestic Industry Product
The packaging of the Product identifies it as a
“toner cartridge,” and toner is a developer
The structure of the Product confirms
that it is a toner (developer) cartridge
“A developer cartridge
comprising:” !°
1° T do not hold that the preamble is limiting.
90
PUBLIC VERSION
Claim 1 Limitation Element in Domestic Industry Product
The developer cartridge includes a
developing roller that extends in the
direction identified by the dashed red line.
Developing roller
extending in a direction
“a developing roller
including a developing
roller shaft extending in
an extending direction;”
| The protrusion of the
“an electrode electrode has a first
electrically connected to portion that is a portion of
. the circumferential
the developing roller surface of the protrusion
shaft, the electrode
including a protrusion
protruding in the
extending direction, the
protrusion having a first The developer cartridge has an
portion, the first portion electrode that receives an electrical
. . bias from a compatible printer and
being _ portion ofa establishes an electrical connection to
circumferential surface the developing roller shaft.
of the protrusion; and”
“a gear including a
plurality of gear teeth
on a portion ofa
circumference of the
The developer cartridge includes a gear that is
rotatable about the protrusion.
This is a first covering portion because it covers a
first portion of the protrusion as it rotates about
gear, the gear being the protrusion, The covering portion is part of the
rotatable about the gear and rotates with the gear about the
. protrusion. The covering portion disrupts the
protrusion, the gear electrical connection between the printer and the
including a first cartridge as it rotates over the first portion of the
protrusion—which is where electrical contact is
covering portion made with the printer.
covering the first
portion, the first | First portion of the protrusion
covering portion being
rotatable with the gear.”
See MSD at 114-19; see also Gayne Decl. at §] 492-97 (showing how the Brother TN-225 toner
cartridge practices claim 7 of the ’460 patent); id. at ] 498-504 (showing how the Brother TN-225
toner cartridge practices claim 8 of the ’460 patent); id. at 4] 505—12 (showing how the Brother
TN-225 toner cartridge practices claim 9 of the ’460 patent); id. at §§ 513-15 (showing how the
91
PUBLIC VERSION
Brother TN-225 toner cartridge practices claim 10 of the ’460 patent); id. at § 516-21 (showing
how the Brother TN-225 toner cartridge practices claim 11 of the ’460 patent); id. at | 522-28
(showing how the Brother TN-225 toner cartridge practices claim 15 of the ’460 patent); id. at
9] 529-37 (showing how the Brother TN-225 toner cartridge practices claim 16 of the ’460 patent).
Based on this undisputed evidence, I find Brother is entitled to summary determination that
the Brother TN-221/225 and TN-223/227 domestic industry products practice at least claim 1 of
the °460 patent.
3. °856 patent
Brother asserts that its TN-420/450, TN-630/660 and TN-730/760/770 toner cartridges
practice the following claims of the 856 patent:
Asserted Patent Domestic Industry Product(s) Asserted Claim(s)
Brother TN-420/450 & TN- 1-9
°856 patent 630/660 toner cartridges
TN-730/760/770 toner cartridges | 1, 4,5, 8,9
See MSD at 101. In support, Brother submitted the Declaration Of Guerry L. Grune, Ph.D, which
shows how the Brother TN-450 toner cartridge practices claim 1 of the ’856 patent, as shown in
the table below.
92
PUBLIC VERSION
°856 patent, Claim 1 Domestic Industry Chart
Claim 1 Limitation Element in Domestic Industry Product
The packaging of the
Domestic Industry
Product identifies it as a
“toner cartridge,” and
toner is a developer
“A developer cartridge
comprising:” 7°
The structure of the
Domestic Industry
Product confirms that it is
a toner (developer)
cartridge
The housing
includes a top,
bottom. and two
opposing sidewalls
formed of a plastic
material, shown as
labeled
“a housing configured
to accommodate
developer therein;”
The housing includes a The housmg is shaped and
fill port to fill a chamber configured to store toner within
within the cartridge with a chamber that is adjacent to the
toner (developer) ; developer fill port
“a developing roller
rotatable about a first The Accused Product
The developing roller is
axis extending in an has a developing roller rotatable by a gear
° ° ° that rotates about an axis positioned on one end of
extending direction, the | | extending in the a developing roller shaft
developing roller extending direction that engages with a
= A . (dashed line), the axis coupling that receives a
inclu ga developing being the axis of rotational drive force
roller shaft extending in |_| totation of the from the printer so that
. i r shaft ing 1
the extendin. g developing roller shafi when the coupling rotates
. ——— the developing roller also
direction; The developing roller includes a Totates
shaft (metal shaft) extending in the
extending direction (dashed line) in
the direction of both sidewalls
?0T do not hold that the preamble is limiting.
93
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a supply roller
rotatable about a
second axis extending in
the extending direction,
configured to supply the
developer to the
developing roller and
the supply roller
including a supply
roller shaft extending in
the extending
direction;”
Supply roller shaft
extending in the direction
of the sidewalls
Supply roller shaft
extending in the direction
of the sidewalls
The supply roller is rotatable about a second access
(dashed line supply roller (second) axis) extending
in the extending direction by a gear on one end of
the supply roller shaft that engages with a coupling
(not shown) that receives a rotational drive force
from the printer such that when the coupling rotates
the supply roller also rotates
The Accused Product has a supply
roller, which is a sponge roller that
contacts the developing roller to
supply toner to the developing roller
“a developing electrode
positioned at an outer
surface of the housing;
and”
A developing electrode is positioned on one side of the housing
of the cartridge to provide an electrical bias to the developing
roller
The developing electrode
is positioned at an outer
surface of the housing. on
the sidewall, and is held
in position by a screw
engaging with the outer
side surface of the
housing
The developing electrode
caimies an electrical bias
across the electrode
indicating this part is
capable of functioning as
an electrode. as shown by
the multimeter that
indicates electrical
conductivity across the
developing electrode
94
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a supply electrode
positioned at the outer
surface, the supply
electrode including:”
A supply electrode is positioned on one side of the housing of the
cartridge to provide an electrical bias to the supply roller
The supply electrode is
positioned at an outer
surface of the housing
and is held in position
by a screw engaging
with the side of the
housing
The supply electrode
carries an electrical bias
across the electrode
indicating this part is
capable of functioning
as an electrode, as
shown by the
multimeter that
indicates electrical
conductivity across the
developing electrode
“a supply electrode
positioned at the outer
surface, the supply
electrode including:”
The supply roller shaft is a metal shaft around
which the supply roller is arranged
The supply electrode is electrically connected to the
supply roller shaft via the supply connection part
making contact with the periphery of the supply roller
shaft. As shown below, an electrical bias is carried
through supply connection part to the supply roller shaft
to indicate and illustrate electrical conductivity
The supply
connection part is a
cylindrical-shaped
connector or cap
that is formed to
accommodate the
supply roller shaft
95
96
Claim 1 Limitation Element in Domestic Industry Product
“a supply protrusion
protruding in the
extending direction, the
supply protrusion
spaced apart from the
supply connection
part.”
See MSD at 119–39; see also Grune Decl. at ¶¶ 397–404 (showing how the Brother TN-450 toner
cartridge practices claim 2 of the ’856 patent); id. at ¶¶ 405–13 (showing how the Brother TN-450
toner cartridge practices claim 3 of the ’856 patent); id. at ¶¶ 414–23 (showing how the Brother
TN-450 toner cartridge practices claim 4 of the ’856 patent); id. at ¶¶ 424–38 (showing how the
Brother TN-450 toner cartridge practices claim 5 of the ’856 patent); id. at ¶¶ 439–47 (showing
how the Brother TN-450 toner cartridge practices claim 6 of the ’856 patent); id. at ¶¶ 448–57
(showing how the Brother TN-450 toner cartridge practices claim 7 of the ’856 patent); id. at
¶¶ 458–66 (showing how the Brother TN-450 toner cartridge practices claim 8 of the ’856 patent);
id. at ¶¶ 467–76 (showing how the TN-450 toner cartridge practices claim 9 of the ’856 patent).
Based on this undisputed evidence, I find Brother is entitled to summary determination that
the Brother TN-420/TN-450 and Brother TN-730/760/770 domestic industry products practice at
least claim 1 of the ’856 patent.
4. ’456 patent
Brother asserts that its TN-420/450, TN-630/660, and TN-730/760/770 toner cartridges
practice the following claims of the ’456 patent:
PUBLIC VERSION
PUBLIC VERSION
Asserted Patent Domestic Industry Product(s) Asserted Claim(s)
Brother TN-420/450 & TN- 145.89
456 patent 630/660 toner cartridges > Oe
Brother TN-730/760/770 toner 9
cartridges
See MSD at 101. In support, Brother submitted the Declaration Of Guerry L. Grune, Ph.D, which
shows how the Brother TN-450 toner cartridge practices claim 1 of the ’856 patent, as shown in
the table below.
°456 patent, Claim 1 Domestic Industry Chart
Claim 1 Limitation Element in Domestic Industry Product
The packaging of the
Domestic Industry
Product identifies it as a
“toner cartridge,” and
toner is a developer
“A cartridge
ising: 7721
comprising: The structure of the
Domestic Industry
Product confirms that it is
a toner (developer)
cartridge
The housing
includes a top.
bottom, and two
opposing sidewalls
formed of a plastic
“a housing configured ae shown as
to accommodate
developer therein;”
The housing includes a fill The housing is shaped and
port to fill a chamber within configured to store toner within
the cartudge with toner a chamber that is adjacent to the
(developer) : developer fill port
21 T do not hold that the preamble is limiting.
97
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a first cartridge
electrode made of
conductive resin, the
first cartridge electrode
positioned on one side of
the housing in an
extending direction,”
A first cartridge electrode is a developing electrode and is
positioned on one side of the housing of the cartridge in an
extending direction (dashed line)
The first cartridge
electrode of the Domestic
Industry Product is
positioned on a side of
the housing and is held in
position by a screw
engaging with the side of
the housing
Qj
The resin material of the
first cartridge electrode is
conductive. as shown by
the multimeter that
indicates electrical
conductivity across the first
cartridge electrode
“and the first cartridge
electrode including: a
first protrusion
protruding in the
extending direction, the
first protrusion being
contactable with a first
apparatus electrode of
an image forming
apparatus; and”
The first cartridge electrode (developing electrode)
includes a first protrusion that protrudes in the
extending direction from the sidewall of the cartridge
Although not
required by the
claim, when the
Domestic Industry
Product 1s inserted
into a printer. a top
surface of the first
cartridge electrode
contacts the first
apparatus electrode
of the printer
The first apparatus electrode of
a compatible printer is formed
of a conductive metal wire
shown
The first cartridge electrode includes a first prowusion
protruding from the sidewall in the extending direction,
the structure of the protrusion includes several surfaces
that are protruded from the sidewall of the cartridge, as
98
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a second cartridge
electrode made of
conductive resin, the
second cartridge
electrode positioned on
the one side of the
housing in the extending
direction,”
oe : electrode is positioned
A second cartridge electrode is a supply electrode and is
positioned on one side of the housing of the cartridge in an
extending direction (direction of sidewall of the cartidge)
The second cartridge
on the same side of the
housing as the first
cartridge electrode and
is held in position by a
screw engaging with
the side of the housing
The resin material of the
second cartridge
electrode is conductive.
as shown by the
multimeter that indicates
electrical conductivity » fp
across the second Mi ;
cartridge electrode . a
“and the second
cartridge electrode
including: a second
protrusion in the
extending direction, the
second protrusion
spaced apart from the
first protrusion and the
second protrusion being
contactable with a
second apparatus
electrode of the image
forming apparatus.”
The second cartridge electrode includes a second protrusion that protrudes from
the sidewall of the cartridge in the extending direction. the structure of the second
protrusion of the Domestic Industry Product includes several surfaces that
protrude from the sidewall in the extending direction. as shown
The second protrusion
is spaced apart from the
first protrusion by an
air gap (dashed lime)
Although not required by
the claim, the second
apparatus electrode of a
compatible printer is
formed of a conductive
metal wire
- 3 Although not required by oo
the claim. when the
Domestic Industry Product
is inserted into a printer, a
top surface of the second
cartridge electrode contacts
the second apparatus
electrode of the printer
See MSD at 139-55; see also Gayne Decl. at {§ 541-60 (showing how the Brother TN-450 toner
cartridge practices claim 4 of the ’456 patent); id. at §§] 561-69 (showing how the Brother TN-450
toner cartridge practices claim 5 of the ’456 patent); id. at 4] 570—79 (showing how the Brother
99
PUBLIC VERSION
TN-450 toner cartridge practices claim 8 of the ’456 patent); id. at §§] 580-86 (showing how the
Brother TN-450 toner cartridge practices claim 9 of the ’456 patent).
Based on this undisputed evidence, I find Brother is entitled to summary determination that
the Brother TN-420/TN-450 and Brother TN-730/760/770 domestic industry products practice at
least claim 1 of the ’456 patent.
5. °387 patent
Brother asserts that its TN-221/225, TN-223/227, and TN-730/760/770 toner cartridges
practice the following claims of the ’387 patent:
Asserted Patent Domestic Industry Product(s) Asserted Claim(s)
Brother TN-221/225 & TN-
387 patent 223/227 toner cartridges 1,3, 5, 7-12, 18
+ Brother TN-730/760/770 toner. |) 3 5 7 49 1
cartridges 7? ,
See MSD at 101. In support, Brother submitted the Declaration of Jarrett C. Gayne, which shows
how the Brother TN-225 toner cartridge practices claim 1 of the ’387 patent, as shown in the table
below.
°387 patent, Claim 1 Domestic Industry Chart
Claim 1 Limitation Element in Domestic Industry Product
The packaging of the Product identifies it as The structure of the Product confirms that
a “toner cartridge,” and toner is a developer it is a toner (developer) cartridge
“A cartridge
comprising:” 77
2 T do not hold that the preamble is limiting.
100
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a coupling rotatable
about a first axis
extending in a first
The cartridge includes a coupling that
communicates with and receives a
driving force from a printer. This
coupling is rotatable about an axis that
extends ina first direction. The axis
line is shown with the dashed blue line
direction;” and the first direction is shown with
the dashed double-sided red arrow.
The cartridge includes a coupling
gear that is fixed to and rotates
with the coupling when a driving
force is applied to the coupling.
= Both of these surfaces are part
“a coupling gear of the coupling gear. The
rotatable with the coupling gear rotates about the
coupling about the first axis, which is shown with
qj the same blue dashed line.
first axis;”
“a developing roller
including a
developing roller
shaft extending in the
first direction, the
developing roller
being rotatable about
a second axis
extending in the first
direction and the
developing roller
shaft including a first
end portion and a
second end portion
separated from the
first end portion in
the first direction;”
The cartridge includes a developing roller that has an interior
shaft. The developing roller shaft is visible at both ends. The
shaft extends in the first direction and is rotatable about a
second axis. The first direction and second axis are shown by
the red dashed double-sided arrow below.
First end
portion
Second end
portion
101
PUBLIC VERSION
Claim 1 Limitation
Element in Domestic Industry Product
“a developing gear
The cartridge includes a
meshing with the developing gear that is
coupling gear, the mounted to the first end The developing
. . portion of the developing gear meshes
develop 2 gear being roller shaft. Here, the with the
mounted to the first developing gear is coupled coupling gear
end portion of the to the developing roller
develo in roller shaft via a D shaped
P £ connection. The developing
shaft, and the gear rotates with the
develo ing ear bein developing roller shaft about
P gs £ the second axis.
rotatable with the
developing roller
shaft about the
second axis;”
“ * e 2 a : — a _
an agitator including The cartridge includes an agitator that extends in the first
an agitator shaft direction. The agitator is rotatable about a third axis different
extending in the first from the coupling axis and the developer axis
direction, the agitator
shaft including a first
end portion and a
second end portion
separated from the
first end portion of
the agitator shaft in
the first direction, the
agitator being
rotatable with the
agitator shaft about a
third axis extending
in the first direction;”
This is the first
end portion of
the agitator
shaft.
This is the
second end
portion of the
agitator shaft.
“a first gear mounted
to the first end
portion of the agitator
shaft and rotatable
with the agitator
shaft;”
The cartridge includes a
first gear that is mounted
to the agitator shaft and
must rotate with the shaft
because of the D shaped
hole.
102
PUBLIC VERSION
Claim 1 Limitation Element in Domestic Industry Product
“a second gear
mounted to the
second end portion of
the agitator shaft and
rotatable with the
agitator shaft: and” The cartridge includes a second gear The second gear rotates with
? that is mounted to the second end the agitator shaft because of
portion of the agitator shaft the D shaped connection.
The cartridge Mesh with coupling gear Mesh with first gear
includes an idle gear
between the
coupling gear and
the first gear. The
“an idle g meshing gear teeth of the idle
gear mesh with the
with the coupling coupling gear and
gear and the first the first gear such
” that the rotation
gear. force applied to the
coupling is
transferred to the
first gear.
See MSD at 155-73; see also Gayne Decl. at 4] 578—89 (showing how the Brother TN-225 toner
cartridge practices claim 3 of the ’387 patent); id. at §§] 590-99 (showing how the Brother TN-225
toner cartridge practices claim 5 of the ’387 patent); id. at {| 600—03 (showing how the Brother
TN-225 toner cartridge practices claim 7 of the ’387 patent); id. at §§] 604—08 (showing how the
Brother TN-225 toner cartridge practices claim 8 of the 387 patent); id. at §§] 609-12 (showing
how the Brother TN-225 toner cartridge practices claim 9 of the ’387 patent); id. at §§ 613-19
(showing how the Brother TN-225 toner cartridge practices claim 10 of the 387 patent); id. at
| 620—28 (showing how the Brother TN-225 toner cartridge practices claim 11 of the ’387 patent);
id. at §§ 629-32 (showing how the Brother TN-225 toner cartridge practices claim 12 of the ’387
patent); id. at §§[ 633-36 (showing how the Brother TN-225 toner cartridge practices claim 18 of
the ’387 patent).
103
104
Based on this undisputed evidence, I find Brother is entitled to summary determination that
the Brother TN-221/TN-225, TN-223/227, and Brother TN-730/760/770 domestic industry
products practice at least claim 1 of the ’387 patent.
B. Economic Prong
As discussed below, Brother has proffered substantial, reliable, and probative evidence
showing that Brother’s domestic activities satisfy the economic prong of the domestic industry
requirement under section 337(a)(3)(A) and (B) with respect to the Asserted Patents.23
1. Relevant Domestic Industry Activities
Brother claims a domestic industry that includes remanufacturing used Covered Cartridges
and refurbishing, replacing, servicing, and supporting Related Products. Cummins Decl. at ¶ 45.
As explained above, supra part I.B.1, Brother Industries, Ltd., is a Japanese company with at least
two subsidiary companies in the United States: Brother International Corporation (U.S.A.)
(“BIC”) and Brother Industries (U.S.A.), Inc. (“BIUS”). BIUS remanufactures Covered
Cartridges, which involves cleaning used cartridges and refilling them with toner. See Cummins
Decl. at ¶¶ 45, 46, 47, 57, 60, 61. BIUS also refurbishes Related Products, which involves
repairing printers returned by customers. Id.. BIC replaces, services, and supports Related
Products, in addition to marketing and selling the Covered Cartridges and Related Products
processed by BIUS. Cummins Decl. at ¶¶ 13, 32-33, 109.
To satisfy its burden, Brother’s domestic industry evidence must show there exists a
domestic industry “related to” articles protected by the patent. See 19 U.S.C. 1337(a)(2). The
patent claims at issue here are directed to toner cartridges. Brother avers its industry includes
23 Brother did not present evidence of a domestic industry based on research and development
under section 337(a)(3)(c).
PUBLIC VERSION
PUBLIC VERSION
expenditures on various activities related to the protected toner cartridges, including refurbishing
printers adapted to exclusively use cartridges with the patented features. Cummuns Decl. at § 95;
see also id. at §§ 97-101. The Commission has credited similar domestic industry expenditures
when “the domestic industry activities ‘have a direct relationship to exploitation of the patented
technology.’”” Certain Magnetic Tape Cartridges & Components Thereof, Inv. No. 337-TA-1058,
Comm/’n Op. at 56, 2019 WL 2635509, at *31 (Apr. 9, 2019) (“Magnetic Tape Cartridges”)
(quoting Certain Video Game Sys. & Wireless Controllers & Components Thereof, Inv. No. 337-
TA-770, Comm’n Op. at 66-67, (Oct. 28, 2013) (“Video Game Systems’’)) (proper to include
expenditures on non-patented machines necessary for the operation of the patented articles). No
evidence contradicts evidence from Brother that its refurbishing business is directly related to its
exploitation of the patented cartridge technology. I therefore find that the relevant domestic
industry activities include both activities related to remanufacturing patented toner cartridges and
activities related to refurbishing the printers, fax machines, MFCs, and drum units compatible with
the patented toner cartridges.
The relevant domestic industry activities for the 460 and ’093 patents include activities
related to the Brother TN-221/225 and TN-223/227 toner cartridges, as well as activities related to
the Brother printers, fax machines, and MFCs compatible with those cartridges, as shown in the
table below. See also supra Part LE.
Group 1 Domestic Industry Products
; ; Compatible Brother | Compatible Brother
Product Line Toner Cartridge Printers MFCs
HL-3180CDW
HL-3140CW MFC-9130CW
DCL Brother TN-221/225 HL-3170CDW MFC-9330CDW
MFC-9340CDW
105
PUBLIC VERSION
. . Compatible Brother | Compatible Brother
Product Line Toner Cartridge Printers MFCs
HLLI20CW | Merc“L3TiocW
ECL Brother TN-223/227 HL-L3230CDW
HL-L3270CDW MFC- L3750CDW
MFC- L3770CDW
See Cummins Decl. at §§ 81, 84-87, 89-90, 97-98, 103. The toner cartridges are collectively
referred to as “Covered Group | Cartridges” and the printers/MFCs are referred to as “Related
Group | Printers” (collectively “Group 1 Domestic Industry Products”).
The relevant domestic industry activities for the ’456 and 856 patents include activities
related to the Brother TN-420/450, TN-630/660, and TN-730/760/770 cartridges, and activities
related to products relying upon those toner cartridges, as shown in the table below:
Group 2 Domestic Industry Products
Product Compatible | Compatible | Compatible
Line Toner Cartridge Brother Brother Brother
Printers Faxes MFCs
HL-2280DW
DCP-7060D
DCP-
HL-2220 7065DN
HL-2230 MFC-7240
HL-2240 FAX-2840 | MFC-7360N
BLL Brother TN-420/450 HL-2240D | FAX-2940 MEC-
HL-2270DW 7365DN
HL-2275DW MFC-
7460DN
MFC-
7860DW
HL-
L2380DW
HL- DCP-
L3210CW L2520DW
HL- DCP-
DLL Brother TN-630/660 L3230CDW N/A L2540DW
HL- MFC-
L3270CDW L2680W
MFC-
L2685DW
106
PUBLIC VERSION
MFC-
L2700DW
MFC-
L2705DW
MFC-
L2707DW
MFC-
L2720DW
MFC-
L2740DW
HL-
L2390DW
HL-
HL- L2395DW
L2350DW DCP-
Brother HL- L2550DW
ELL TN-730/760/770 L2370DW is MFC-
HL- L2710DW
L2370DWXL MFC-
L2750DW
MFC-
L2750DWXL
SeeCummins Decl. at §§ 82, 88, 91-93, 99-101, 104-106. The toner cartridges are collectively
referred to as “Covered Group 2 Cartridges” and the printers/Faxes/MFCs are referred to as
“Related Group 2 Printers” (collectively “Group 2 Domestic Industry Products”).
The relevant domestic industry activities for the °398 patents include activities related to
the Brother TN-221/225, TN-223/227 and TN-730/760/770 cartridges, and activities related to the
compatible products, as shown in the table below.
Group 3 Domestic Industry Products
Compatible
Brother
MFCs
HL-
3180CDW
HL-3140CW MFC-
HL-3170CDW 9130CW
MFC-
9330CDW
Product . Compatible
Line Toner Cartridge Brother Printers
DCL Brother TN-221/225
107
PUBLIC VERSION
Compatible
Brother
MFCs
MFC-
9340CDW
HL-
L3290CDW
MFC-
L3710CW
MFC-
L3750CDW
MFC-
L3770CDW
HL-
L2390DW
HL-
L2395DW
DCP-
Brother BL-L2350DW L2550DW
ELL HL-L2370DW
TN-730/760/770 HL-L2370DWXL MFC-
L2710DW
MFC-
L2750DW
MFC-
L2750DWXL
Product . Compatible
Line Toner Cartridge Brother Printers
HL-L3210CW
ECL Brother TN-223/227 HL-L3230CDW
HL-L3270CDW
Cummins Decl. at §§ 82, 84-87, 89-90, 93, 97, 98, 101-103, 106. The toner cartridges are
collectively referred to as “Covered Group 3 Cartridges” and the printers/MFCs are referred to
as “Related Group 3 Printers”~° (collectively “Group 3 Domestic Industry Products”).76
4 Collectively, Covered Group 1 Cartridges, Covered Group 2 Cartridges, and Covered Group 3
Cartridges are referred to as “Covered Cartridges.”
° Collectively, Group 1 Printers, Group 2 Printers, and Group 3 Printers are referred to as
“Related Products.”
6 Collectively, Group 1 Domestic Industry Products, Group 2 Domestic Industry Products, and
Group 3 Domestic Industry Products are referred to as “Domestic Industry Products.”
108
109
2. Allocation Methods
Brother has two main domestic facilities: one in Bartlett, Tennessee, and one in
Bridgewater, New Jersey. See Cummins Decl. at ¶¶11, 36. The Bartlett, Tennessee facility serves
as a manufacturing, distribution, and service hub for both BIUS and BIC. See Cummins Decl. ¶¶
22, 24. The Bridgewater, New Jersey, facility serves as BIC’s principle place of business.
Cummins Decl. ¶ 19. Because only some of the products produced and serviced at these facilities
are claimed domestic industry products, Brother utilized several methods to allocate costs to the
claimed domestic industry products.
Brother relies on five different calculations to allocate its domestic investments between
the different groups of Domestic Industry Products. Two calculations relate to Brother’s
investments in plant space and three relate to Brother’s labor investments.
With respect to its plant investments, Brother used a calculation it called the “Support
Allocation” to identify facilities used in the remanufacture of Covered Cartridges. See MSD at
179; Cummins Decl. at ¶ 118; Ex. 6-AV. Brother also used a method it called the “Remanufacture
Allocation” to allocate space in its facilities to the Covered Cartridges. MSD at 179-180; Cummins
Decl. at ¶ 250.
Turning to labor investments, Brother’s first method, which it called the “Standard Time
Allocation,” identified the amount of time an employee was employed in the remanufacture of
Covered Cartridges by BIUS. MSD at 178, Cummins Decl. at ¶ 152. Next, Brother allocated
labor costs based on the total units of Related Products that BIUS refurbished compared to all other
printers, fax machines, and MFCs that BIUS refurbished, a method Brother calls “Refurbishment
Allocation.” MSD at 179; Cummins Decl. at ¶ 218. And finally, Brother calculated the
compensation of BIC employees responsible for selling Domestic Industry Products using a
PUBLIC VERSION
PUBLIC VERSION
method it called the “Compensation Allocation.” MSD at 180, Cummins Decl. at § 119. I briefly
describe each methodology below.
(1) Support Allocation
Brother’s “Support Allocation” is a comparison of the total revenue generated by Covered
Cartridges remanufactured in the United States to the revenue generated by all products using the
same labor, capital, plant, and equipment. See Cummins Decl. at § 118. The results for the
“Support Allocation” are shown in the table below:
Support Allocation
Covered FY FY FY FY FY FY FY FY
Cartridges | 2012 2013 2014 2015 2016 2017 2018 20192’
221/225
420/450
630/660
Total
Cummuns Decl. at § 118; Exs. 6-L, 6-M, 6-AR, 6-AU, 6-AV.
(2) Remanufacture Allocation
Brother used the Remanufacture Allocation to allocate space in its facilities to the Covered
Cartridges by comparing the space within Brother’s domestic manufacturing facilities used to
remanufacture toner cartridges to the total space in those facilities, then assigning costs for the
facilities based on this ratio. MSD at 179-181; Cummins Decl. at §§ 250-257; Exs. 6-W (BIUS
Data) at “BIUS_FY2012”—“BIUS FY2019” Tabs, 6-Q (Facility Costs), 6-T (Tennessee Square
Footage), 6-Y (Tennessee Cost Breakdown) at 1, 6-AH (BIUS Manufacturing Space Breakdown),
6-AI (BIUS Remanufacture Percentages), 6-AJ (BIUS Warehouse Space Breakdown), 6-AK
(BIUS Office and Other Space Breakdown), 6-AL (BIUS Manufacturing Cost Breakdown) at 2,
27 FY2019 was measured up to the end of Q3, the end of fact discovery. See MSD at 176.
110
PUBLIC VERSION
6-AM (BIUS Warehouse Cost Breakdown), 6-AN (BIUS Office and Other Cost Breakdown),
6-AO (Fixed Assets), 6-BZ (Standard Times), 6-CF (Fixed Asset Breakdown).
(3) Standard Time Allocation
Brother’s “Standard Time Allocation” is a measure of the percent of time employees spent
remanufacturing Covered Cartridges compared to the total time spent remanufacturing all
cartridges (i.e. Covered Cartridges & non-Covered Cartridges). Cummins Decl. at § 152. The
results for the “Standard Time Allocation” are shown in the table below.
Standard Time Allocation
Covered FY FY FY FY FY FY FY FY
Cartridges | 2012 2013 2014 2015 2016 2017 2018 201978
221/225
420/450
630/660
Total
Cummuns Decl. at § 152; Ex. 6-BZ.
(4) Refurbishment Allocation
Brother’s “Refurbishment Allocation” is a measure of the time employees spent
refurbishing Related Products compared to the total time spent refurbishing all printers. See
Cummins Decl. at § 218. The results for the “Refurbishment Allocation” are shown in the table
below:
Refurbishment Allocation
Covered FY FY FY FY FY FY FY FY
Cartridges 2012 2013 2014 2015 2016 2017 2018 20197°
221/225
8 FY2019 was measured up to the end of Q3, the end of fact discovery in this investigation. See
MSD at 176.
2° FY2019 was measured up to the end of Q3, the end of fact discovery. See MSD at 176.
111
PUBLIC VERSION
223/227
420/450
630/660
730/760/770
Total
Cummuns Decl. at § 218; Ex. 6-CE.
(5) Compensation Allocation
Brother’s “Compensation Allocation” is a proportion of the total compensation paid to BIC
employees in the relevant employment units (i.e., those responsible for the domestic industry
products) to the total compensation paid to all BIC employees. See Cummins Decl. §§ 119-122;
Ex. 6-O (showing portion of total BIC compensation paid to BMG employees was
FY2015, FY2016, FY2017, FY2018, and Q3 FY2019, respectively).
3. Plant and Equipment
The evidence shows that Brother has invested in significant domestic plant and equipment
that practice the asserted patent.
Based on the undisputed facts, Brother has made significant investments in plant and
equipment attributable to the Domestic Industry Products since it started remanufacturing toner
cartridges in FY2012, as shown in the following table:
Total Investment in Plant & Equipment Since FY2012
Investment patents (093 wea patents (456 wha Asserted Group 3
P P - patent (’387 patent)
Total TN Facility
Expenses (BIUS)
Total TN Facility
Expenses (BIC)
NJ Facility
Expenses
112
PUBLIC VERSION
Asserted Group 1 Asserted Group 2
Investment patents (7093 and patents (7456 and Asserted Group 3
7460 patents °856 patents patent (°387 patent)
Total Fixed Assets
Total
See Cummins Decl. §§ 247-59.
Upon review of the undisputed evidence, I find Brother is entitled to summary
determination that it has made a significant investment in plant and equipment for an industry
related to articles protected by the Asserted Patents within the meaning of section 35 U.S.C.
§ 1337(a)(3)(A).
4. Labor and Capital
The undisputed evidence shows that between FY2012 and Q3 FT2019 Brother’s
subsidiaries BIU and BIC invested significantly in domestic labor related to an industry in articles
protected by the Asserted Patents and made significant expenditures of capital related to that
industry. During that period, Brother paid significant amounts to its manufacturing and its sales,
general, and administrative (“SG&A”) employees, purchased significant quantities of used
Covered Cartridges Related Products for remanufacturing, and provided significant repair and
support services related to the Related Products.
Domestic investments by BIUS in domestic labor and capital for remanufacturing the
Covered Cartridges are shown in the table below:
Domestic Investments by BIUS in Labor & Capital for Covered Cartridges
TN-221/225 TN-420/450 TN-630/660
BIUS Time Period Cartridges Cartridges Cartridges
Allocation Allocation Allocation
Direct Employees*® | FY2012—
3° Brother provided a range for the number of employees due to differences in employee
headcount from FY 2012-Q3 FY2019. See Cummins Decl. at ¥§j 38, 154.
113
PUBLIC VERSION
TN-221/225 TN-420/450 TN-630/660
BIUS Time Period Cartridges Cartridges Cartridges
Allocation Allocation Allocation
| Q3 FY2019
Indirect Employees 03 FY2019
SG&A Employees 03 F¥20 19
Compensation FY2012—
Q3 FY2019
Domestically FY2012—
sourced packaging FY2018
See Cummins Decl. 38, 154—55, 202.
Domestic investments by BIC in labor and capital for the Covered Cartridges are shown in
the table below:
Domestic Investments by BIC in Labor & Capital for Covered Cartridges
TN-221/225 TN-420/450 TN-630/660
BIC Time Period Cartridges Cartridges Cartridges
Allocation Allocation Allocation
BMG?! - Number FY 2013-
of Employees FY2018
BMG - Employee FY2012—
Compensation Q3 FY2019
Used Toner
Cartridge oi 8
Collection
Cartridge FY2013—
Disposal Costs FY2018
Toner Powder FY2013-—
Disposal Costs FY2018
31 BMG stands for “Business Machines Group,” which is responsible for marketing and sales of
the Domestic Industry Products. See, e.g., Cummins Decl. at § 14. I find that Brother’s
marketing and sales expenditures are appropriately considered as part of its domestic industry in
light of their relationship to Brother’s significant investment in manufacturing and servicing
products. See Certain Television Sets, Television Receivers, Television Tuners, &Components
Thereof, Inv. No. 337-TA-910, 2015 WL 6755093, at *38—9, Comm’n Op. at 73 (Oct. 30, 2015).
Brother is not a mere importer. Cf Certain Male Prophylactic Devices, 337-TA-546, Comm’n
Op. at 16, USITC Pub. No. 4005 (May 2008) (citing Certain Prod. with Gremlin Character
Depictions, Inv. No. 337-TA-201, Comm’n Op. at 6, USITC Pub. No. 1815 (Mar.. 1986)).
114
PUBLIC VERSION
See Cummins Decl. §§ 16, 120, 122, 144-48.
Domestic investments by BIC in labor and capital for the Related Products are shown
below.
Domestic Investments by BIC in Labor & Capital for Related Products
Brother Brother Brother Brother er
Time TN- TN- TN- TN- -
BIC Period 221/225 223/227 420/450 630/660 730/760/
i ; . . 770
Printers | Printers | Printers | Printers .
Printers
Number of OL 2-
Employees FY2019
FY2012—
Employees Ql
Compensation FY2019
. FY2012—
Service Costs FY2018
Replacement OL 2-
Costs FYD019
See Cummins Decl. §§ 137, 216, 219-20.
Domestic investments by BIC in repairs and service calls for the Domestic Industry
Products are shown below:
115
Domestic Investments by BIC in Repairs & Service Calls for Related Products
PUBLIC VERSION
TN-
. TN- TN- TN- TN-
BIC pa 221/225 | 223/227 | 420/450 | 630/660 | 7 a
erro Products Products Products Products
Products
Customer | soot 3,
PP 1 2015-
an March 22,
warranty 2019
calls?”
Costs
customer | SePt3:
su ort 2015—
» d March 22,
warranty 2019
calls**
See Cummins Decl. § 134.
5. Brother’s Domestic Industry Investments Are Significant and
Substantial
The following chart totals Brother’s domestic labor and capital investments for all Covered
Products and Related Products and compares those investments to Brother’s total domestic
investments (i.e., domestic investments in activities related to the patented articles as well as
domestic investments for products not related to the Asserted Patents):
33 Cummins Decl. at § 134.
116
PUBLIC VERSION
Summary of Brother’s Labor & Capital Investments for All Covered Products and Related
Products
Total Activities Group 1 Group 2
(Related and Covered Covered Group 3 Covered
Investment Not Related to Cartridges & | Cartridges & Cartridges &
the Asserted Related Related Related Products*®
Patents Products*4 Products**
Toner
Remanufacture
Employee
Compensation
Printer
Refurbishment
Employee
Compensation
BMG
Employee
Compensation
Cartridge
Collection
Cartridge
Disposal
Toner Disposal
Cartridge
Packaging
Printer
Replacement
Customer
Support Costs
Printer Service
Costs
| Total
As shown above, Brother has invested BE willion in labor and capital related to the
Covered Cartridges, which directly practice the Asserted Patents. This expenditure is significant,
34 The Group 1 Domestic Industry Products are the domestic industry products for the ’093 and
°460 patents.
3° The Covered 420/450, 630/660 and 730/760/770 Cartridges and Printers are the domestic
industry products for the ’456 and ’856 patents.
36 The Covered 221/225, 223/227, and 730/760/770 Cartridges and Printers are the domestic
industry products for the *387 patent.
117
118
particularly as a percentage of Brother’s total domestic expenditure of million for these types
of services for all products. This finding alone is sufficient to conclude that Brother has proven a
domestic industry under section 337(a)(3)(A) and (B).
In addition to its Covered Cartridge investments, Brother has invested million in
the labor and capital for the Related Products, which rely upon the Covered Cartridges to operate.
This total expenditure of million in Covered Cartridges and Related Products is
significant, as it is an even greater percentage of Brother’s total domestic expenditure of
million for these types of services for all products.
I find, based on the undisputed, substantive, reliable, and probative evidence explained
above, that Brother has met its burden of showing that a domestic industry exists related to articles
protected by the Asserted Patents, as defined in both section 337(a)(3)(A) and (B).
V. INFRINGEMENT
Brother has shown undisputed evidence that the Defaulting Respondents and Aster each
infringe various Asserted Claims of the Asserted Patents, as described below.
A. Representative Products
As discussed in Section I.F.4 above, Brother’s experts examined each accused product
model individually. The experts then organized the Accused Products into three groups based on
the Asserted Patents they allegedly infringe. The experts created subgroups for similar model
types and selected a representative product for each model type. The tables below summarize this
information, discussed in Section I.F.4. above.
PUBLIC VERSION
PUBLIC VERSION
Accused Group | Products
(accused of infringing the Asserted Group 1 Patents (*093 and *460 Patents))
Respondents Brands Model Type & Representative
Product
AMI Arthur Imaging TN-225 | Type-A: Arthur Imaging-
Do It Wiser Do It Wiser branded
Eco Imaging Cool Toner Type-B: Arcon-branded
Ecoolmart Hi-Vision Hi- Yields Type-C: V4ink-branded
Globest InkeSale Type-D: Greencycle-branded
Greencycle Greencycle Type-E: Linkyo-branded
Is Ink4 work
Ikong & Solong IRONG
Intercon & Aster Arcon
[Print Toner Bank
LD Products LD and SpeedyInks
Smartyet MIROO
Super Warehouse Inktoneram
Xiaohui JARBO
AMI Arthur Imaging TN-227) | Type-A: Arthur Imaging-
Eco Imaging Cool Toner branded
Globest InkeSale Type-B: Arcon-branded
Greencycle Greencycle Type-C: EZInk-branded
Intercon & Aster Arcon
119
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Accused Group 2 Products
(accused of infringing the Asserted Group 2 Patents ('456 and °856 Patents)
Respondents Brands Model Type & Representative Product
An An Beauty CIMYBabee TN-450 | Type-1: InkeSale-branded
Aztech Aztech Type-2: Arcon-branded
Billiontree Toner Kingdom Type-3: Linkyo-branded
Do It Wiser Do It Wiser Type-4: EPS-branded
Eco Imaging Cool Toner
Ecoolmart Hi-Vision Hi-Yields
Globest InkeSale
Greencycle Greencycle
Hongkong Boze Greensky
I8 Ink4work
Ikong & Solong IKONG
Intercon & Aster Arcon
LD Products LD and SpeedyInks
Mangoket EPS
Smartjet MIROO
Super Warehouse Inktoneram
Machui JAREO
An An Beauty CIMYBabee TN-660 Type-1: InkeSale-branded
AMI Arthur Imaging Type-2: Arcon-branded
Aztech Aztech Type-3: Linkyo-branded
Billiontree Toner Kingdom Type-4: JARBO-branded
Do It Wiser Do It Wiser Type-3: IRONG-branded
Eco Imaging Cool Toner Type-6: EZink-branded
Ecoolmart Hi-Vision Hi-Yields
Globest InkeSale
Greencycle Greencycle
Hongkong Boze Greensky
I8 Ink4work
Ikong & Solong IKONG
Intercon & Aster Arcon
TPrint Toner Bank
LD Products LD and SpeedyInks
Mangoket EPS
Super Warehouse Tnktoneram
Maohui JAREO
An An Beauty CIMYBabee TN-760 Type-1: InkeSale-branded
AMI Arthur Imaging Type-2: Arcon-branded
Aztech Aztech Type-3: Linkyo-branded
Carlos Imaging Green Toner Supply Type-4: JAREO-branded
Do It Wiser Do It Wiser
Eco Imaging Cool Toner
Ecoolmart Hi-Vision Hi-Yields
Globest InkeSale
Greencycle Greencycle
Hongkong Boze Greensky
Ig Ink4work
Ikong & Solong IKONG
Intercon & Aster Arcon
TPrint Toner Bank
LD Products LD and SpeedyInks
Super Warehouse Inktoneram
Maohui JAREO
120
121
Brother’s experts examined each toner cartridge by, for example, photographing the
accused product and its packaging, disassembling the accused product, testing the conductivity of
certain components, and reassembling the accused product. Grune Decl. at ¶ 64, Gayne Decl. at ¶
102.
Based on his analysis, Mr. Gayne concluded that the Accused Group 1 and Group 3
Products are “identical in relevant respects with respect to my infringement analysis.” Gayne Decl.
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122
at ¶ 105. Because of this, he concluded that “the infringement analysis for each of the Accused
Group 1 Products is substantively the same” and chose AMI’s Arthur Imaging-branded TN-225
and TN-227 compatible products as representative examples of the Accused Group 1 Products.
Id. at ¶ 108. For the same reasons, Mr. Gayne chose to use AMI’s Arthur Imaging-branded
TN-225, TN-227, and TN-760 compatible products as representative examples of the Accused
Group 3 Products. Id. at ¶ 111. Mr. Gayne also included a separate analysis of the Type-B
Accused Group 1 and Group 3 Products where those products differed from the other Accused
Group 1 and 3 Products. See, e.g., id. at ¶¶ 109, 112.
Similarly, Dr. Grune concluded that “there are very few differences between the Accused
Group 2 Products” and that where differences exist, they “are insignificant for purposes of
determining infringement.” Grune Decl. at ¶ 68. Accordingly, Dr. Grune chose to use the Type 1
InkeSale-branded TN-450, TN-660, and TN-760 Accused Products for his exemplary
infringement analysis. Id. at ¶ 69.
Staff calls attention to the differing ways the two experts grouped the TN-760 Accused
Products. Staff notes that each expert chose different representative products for each “type” of
TN-760 Accused Product “despite the fact that those products are allegedly identical to one another
in all respects.” Staff Reply at 93 (citing Grune Decl. at ¶ 40; Gayne Decl. at ¶ 8). But as Brother
explains, the experts each “focused on different features of the Accused Cartridges when
identifying variations” between models because the experts were considering the models’ features
with respect to different patent claims. MSD at 21, fn 3. Upon review, I find each expert’s
selection of representative products to be reasonable in the relevant context. Each expert carefully
analyzed every Accused Product model and categorized each model in a manner consistent with
the relevant patent claims. No evidence contradicts either expert’s categorizations.
PUBLIC VERSION
123
B. Asserted Group 1 Patents
The Asserted Group 1 Patents are the ’093 and ’460 patents. Brother contends various
products of respondents AMI, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8,
Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui
infringe the Asserted Group 1 patent claims. As noted in the Introduction, Brother calls this set of
products the Accused Group 1 Products.
Brother’s expert Mr. Gayne divided the Accused Group 1 Products into five different types
(i.e., Type-A, Type-B, Type-C, Type-D, Type-E) and selected a representative product for each
type. Gayne Decl. at ¶¶ 8-9. From these, Mr. Gayne selected two products, one TN-225 model
and one TN-227 model, as “Representative Group 1 Products.” Id. at ¶ 108. Mr. Gayne then
compared the Representative Group 1 Products to each limitation of the asserted claims of the
Asserted Group 1 patents. Mr. Gayne also included a separate analysis of the Type-B Accused
Group 1 Products with respect to some Asserted Group 1 Patent claims. As discussed below, I
find that the Accused Group 1 Products infringe the asserted claims of the Asserted Group 1
Patents.
1. ’093 patent
Brother contends the Accused Group 1 Products infringe claims 1-5, 10, and 12-15 the
’093 patent.
Mr. Gayne provided a detailed, limitation-by-limitation analysis showing how, in his
opinion, the Representative Group 1 Products and the Type-B Accused Group 1 Products meet the
limitations of the asserted claims of the ’093 patent. Gayne Decl. at ¶¶ 114-202. Mr. Gayne also
provided detailed claim charts showing how, in his opinion, the representative product for each
PUBLIC VERSION
PUBLIC VERSION
type of Accused Group 1 Product satisfies each limitation of the asserted claims of the 093 patent.
The organization of Mr. Gavne’s analysis is summarized below.
Accused Group 1 Products — ’093 patent
Respondents Brother Type Representative Product Claim Chart
Compatible
Model
AML, Do It TN-225 Type-A | Arthur Imaging-branded | Gayne Decl. Ex. H
Wiser, TN-225
Ecoolmart,
Smartjet, Super
Warehouse
Aster, Intercon, | TN-225 Type-B_ | Arcon-branded TN-225 Gayne Decl. Ex. K
TPrint, Eco
Imaging
Globest TN-225 Type-C | V4ink-branded TN-225 Gayne Decl. Ex. L
Greencycle, 18, | TN-225 Type-D | Greencycle-branded TN- | Gayne Decl. Ex. N
Ikong, Solong, 225
Xiaohui
LD Products TN-225 Type-E Linkyo-branded TN-225 Gayne Decl. Ex. P
AML, Globest, TN-227 Type-A | Arthur Imaging-branded | Gayne Decl. Ex. S
Greencycle TN-227
Aster, Intercon, | TN-227 Type-B_ | Arcon-branded TN-227 Gayne Decl. Ex. T
Eco Imaging
No remaining TN-227 Type-C E-Z Ink-branded TN-227 | Gayne Decl. Ex. V
respondents
As detailed in this record, the Accused Group 1 Products sold by respondents AMI, Do It
Wiser, Ecoolmart, Globest, Greencycle, I8, Ikong, Solong, LD Products, Smartjet, Super
Warehouse, and Xiaohui meet every limitation of claims 1-5, 10, and 12-15 of the ’093 patent.
Gayne Decl. at ff 114-202, Exs. H, K, L, N, P, S, T, V. Accordingly, Brother has presented
substantial, reliable, and undisputed evidence that those respondents infringe claims 1-5, 10, and
12-15 of the 093 patent.
Additionally, the record demonstrates that the Accused Group 1 Products sold by
respondents Intercon, Aster, [Print, and Eco Imaging meet every limitation of claims 1-5 and 14-15
124
PUBLIC VERSION
of the 093 patent. Jd. Accordingly, Brother has presented substantial, reliable, and undisputed
evidence that those respondents infringe claims 1-5 and 14-15 of the ’093 patent.
Based on the undisputed record evidence, I conclude Brother is entitled to summary
determination of the infringement findings above with respect to the ’093 patent.
2. °460 patent
Brother contends the Accused Group | Products infringe claims 1, 7-11, 15, and 16 of the
460 patent.
Mr. Gayne provided a detailed, limitation-by-limitation analysis showing how, in his
opinion, the Representative Group 1 Products and the Type-B Accused Group | Products meet the
limitations of the asserted claims of the ’460 patent. Gayne Decl. at §] 203-280. Mr. Gayne also
provided detailed, annotated claim charts showing how, in his opinion, the representative product
for each type of Accused Group 1 Product satisfies each limitation of the asserted claims of the
°460 patent. The organization of Mr. Gavne’s analysis is summarized below.
Accused Group 1 Products — ’460 patent
Respondents Brother Type Representative Product Claim Chart
Compatible
Model
AML, Do It TN-225 Type-A | Arthur Imaging-branded | Gayne Decl. Ex. I
Wiser, TN-225
Ecoolmart,
Smartjet, Super
Warehouse
Aster, Intercon, | TN-225 Type-B_ | Arcon-branded TN-225 | Gayne Decl. Ex. J
TPrint, Eco
Imaging
Globest TN-225 Type-C V4ink-branded TN-225 Gayne Decl. Ex. M
Greencycle, 18, | TN-225 Type-D | Greencycle-branded TN- | Gayne Decl. Ex. O
Ikong, Solong, 225
Xiaohui
LD Products TN-225 Type-E Linkyo-branded TN-225 | Gayne Decl. Ex. Q
AML, Globest, TN-227 Type-A | Arthur Imaging-branded | Gayne Decl. Ex. R
Greencycle TN-227
125
PUBLIC VERSION
Accused Group 1 Products — ’460 patent
Respondents Brother Type Representative Product Claim Chart
Compatible
Model
Aster, Intercon, | TN-227 Type-B | Arcon-branded TN-227 | Gayne Decl. Ex. U
Eco Imaging
No remaining TN-227 Type-C_ | E-Z Ink-branded TN-227 | Gayne Decl. Ex. W
respondents
As detailed in this record, the Accused Group 1 Products sold by respondents AMI, Do It
Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, I8, Ikong, Solong, Intercon, Aster, IPrint,
LD Products, Smartjet, Super Warehouse, and Xiaohui meet every limitation of claims 1, 7-11,
15, and 16 of the ’460 patent. See Gayne Decl. at § 203-280, Exs. I, J, M, O, Q, R, U, W.
Accordingly, Brother has presented substantial, reliable, and undisputed evidence that those
respondents infringe claims 1, 7-11, 15, and 16 of the ’460 patent. Based on the undisputed record
evidence, I conclude that Brother is entitled to summary determination to that effect.
Cc. Asserted Group 2 Patents
The Asserted Group 2 Patents are the °856 and ’456 patents. Brother contends various
products of respondents An An Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser,
Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon,
Aster, IPrint, LD Products, Mangoket, Smartjet, Super Warehouse, and Xiaohui infringe the
Asserted Group 2 patent claims. As noted in the Introduction, Brother calls this set of products
the Accused Group 2 Products.
Brother’s expert Dr. Grune divided the Accused Group 2 Products into six different types
(i.e., Type-1, Type-2, Type-3, Type-4, Type-5, Type-6) and selected a representative product for
each type. Grune Decl. at §§[ 40-41. Dr. Grune compared the representative product for each type
to each limitation of the asserted claims of the Asserted Group 2 Patents. Jd. at § 43.
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PUBLIC VERSION
As discussed below, I find that the Accused Group 2 Products infringe the asserted claims
of the Asserted Group 2 Patents.
1. °856 patent
Brother contends the Accused Group 2 Products infringe claims 1-7 and 9 of the ’856
patent.
Dr. Grune provided a detailed, limitation-by-limitation analysis, including model specific
analyses where appropriate, showing how, in his opinion, the Accused Group 2 Products meet the
limitations of the asserted claims of the ’856 patent. Grune Decl. at §] 72-217. Dr. Grune also
provided detailed, annotated claim charts showing how, in his opinion, the representative product
for each type of Accused Group 2 Product satisfies each limitation of the asserted claims of the
°856 patent. The organization of Dr. Grune’s analysis is summarized below.
Accused Group 2 Products — ’856 patent
Respondents Brother Type Representative Product Claim Chart
Compatible
Model
Globest, An An | TN-450 Type-1l InkeSale-branded TN- Grune Decl. Ex. A
Beauty, Do It 450
Wiser,
Greencycle,
Hongkong Boze,
Ecoolmart,
Ikong, Solong,
18, Super
Warehouse,
Xiaohui,
Billiontree,
Smartjet
Aster, Intercon, | TN-450 Type-2 Arcon-branded TN-450 Grune Decl. Ex. B
Aztech, Eco
Imaging
LD Products TN-450 Type-3 Linkyo-branded TN-450 | Grune Decl. Ex. C
Mangoket TN-450 Type-4 EPS-branded TN-450 Grune Decl. Ex. D
127
PUBLIC VERSION
Accused Group 2 Products — ’856 patent
Respondents
Brother
Compatible
Model
Type
Representative Product
Claim Chart
Globest, AMI,
An An Beauty,
Do It Wiser,
Greencycle, I8,
Billiontree
TN-660
Type-1
InkeSale-branded TN-
660
Grune Decl. Ex. E
Aster, Intercon,
Aztech, Eco
Imaging,
Hongkong Boze,
TPrint
TN-660
Type-2
Arcon-branded TN-660
Grune Decl. Ex. F
LD Products
TN-660
Type-3
Linkyo-branded TN-660
Grune Decl. Ex. G
Xiaohui,
Ecoolmart
TN-660
Type-4
Jarbo-branded TN-660
Grune Decl. Ex. H
Ikong, Solong,
Super
Warehouse
TN-660
Type-5
Ikong-branded TN-660
Grune Decl. Ex. I
No remaining
respondents
TN-660
Type-6
E-Z Ink-branded TN-660
Grune Decl. Ex. J
Globest
TN-760
Type-1
InkeSale-branded TN-
760
Grune Decl. Ex. K
Aster, Intercon,
Aztech, An An
Beauty, I8,
TPrint
TN-760
Type-2
Arcon-branded TN-760
Grune Decl. Ex. L
AMI, Carlos
Imaging, Eco
Imaging, Do It
Wiser,
Greencycle,
Super
Warehouse, LD
Products
TN-760
Type-3
Linkyo-branded TN-760
Grune Decl. Ex. M
Xiaohui, Ikong,
Solong,
Ecoolmart
TN-760
Type-4
Jarbo-branded TN-760
Grune Decl. Ex. N
As detailed in this record, the Accused Group 2 Products sold by respondents An An
Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest,
Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket,
128
PUBLIC VERSION
Smartjet, Super Warehouse, and Xiaohui meet every limitation of claims 1-7 and 9 of the ’856
patent. Grune Decl. at 4] §§{ 72-217, Exs. A-N. Accordingly, Brother has presented substantial,
reliable, and undisputed evidence that those respondents infringe claims 1-7 and 9 of the ’856
patent. Based on the undisputed record evidence, I conclude Brother is entitled to summary
determination to that effect.
2. °456 patent
Brother contends the Accused Group 2 Products infringe claims 1, 4, 5, and 9 of the ’456
patent.
Dr. Grune provided a detailed, limitation-by-limitation analysis, including model specific
analyses, showing how, in his opinion, the Accused Group 2 Products meet the limitations of the
asserted claims of the ’456 patent. Grune Decl. at §§ 218-319. Dr. Grune also provided detailed,
annotated claim charts showing how the representative product for each type of Accused Group 2
Product satisfies each limitation of the asserted claims of the ’456 patent. The organization of Dr.
Grune’s analysis is summarized below.
Accused Group 2 Products — ’456 patent
Respondents Brother Type Representative Product Claim Chart
Compatible
Model
Globest, An An | TN-450 Type-1 | InkeSale-branded TN-450 | Grune Decl. Ex. O
Beauty, Do It
Wiser,
Greencycle,
Hongkong Boze,
Ecoolmart,
Ikong, Solong,
I8, Super
Warehouse,
Xiaohui,
Billiontree,
Smartjet
129
PUBLIC VERSION
Accused Group 2 Products — ’456 patent
Respondents
Brother
Compatible
Model
Type
Representative Product
Claim Chart
Aster, Intercon,
Aztech, Eco
Imaging
TN-450
Type-2
Arcon-branded TN-450
Grune Decl. Ex. P
LD Products
TN-450
Type-3
Linkyo-branded TN-450
Grune Decl. Ex. Q
Mangoket
TN-450
Type-4
EPS-branded TN-450
Grune Decl. Ex. R
Globest, AMI,
An An Beauty,
Do It Wiser,
Greencycle, I8,
Billiontree
TN-660
Type-1
InkeSale-branded TN-660
Grune Decl. Ex. S
Aster, Intercon,
Aztech, Eco
Imaging,
Hongkong Boze,
TPrint
TN-660
Type-2
Arcon-branded TN-660
Grune Decl. Ex. T
LD Products
TN-660
Type-3
Linkyo-branded TN-660
Grune Decl. Ex.
Xiaohui,
Ecoolmart
TN-660
Type-4
Jarbo-branded TN-660
<|G
Grune Decl. Ex.
Ikong, Solong,
Super
Warehouse
TN-660
Type-5
Ikong-branded TN-660
Grune Decl. Ex. W
No remaining
respondents
TN-660
Type-6
E-Z Ink-branded TN-660
Grune Decl. Ex. X
Globest
TN-760
Type-1
InkeSale-branded TN-760
Grune Decl. Ex.
Aster, Intercon,
Aztech, An An
Beauty, I8,
Print
TN-760
Type-2
Arcon-branded TN-760
N|<
Grune Decl. Ex.
AML, Carlos
Imaging, Eco
Imaging, Do It
Wiser,
Greencycle,
Super
Warehouse, LD
Products
TN-760
Type-3
Linkyo-branded TN-760
Grune Decl. Ex.
AA
Xiaohui, Ikong,
Solong,
Ecoolmart
TN-760
Type-4
Jarbo-branded TN-760
Grune Decl. Ex.
AB
130
131
As detailed in this record, the Accused Group 2 Products sold by respondents An An
Beauty, Aztech, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest,
Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket,
Smartjet, Super Warehouse, and Xiaohui meet every limitation of claims 1, 4, 5, and 9 of the ’456
patent. Grune Decl. at ¶¶ ¶¶ 218-319, Exs. O-AB. Accordingly, Brother has presented substantial,
reliable, and undisputed evidence that those respondents infringe 1, 4, 5, and 9 of the ’456 patent.
Based on the undisputed record evidence, I conclude Brother is entitled to summary determination
to that effect.
D. Asserted Group 3 Patent
Brother contends the Accused Group 3 Products of respondents An An Beauty, Aztech,
AMI, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong
Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and
Xiaohui infringe various claims of the ’387 patent, the only Asserted Patent in Group 3. The
claims at issue are claims 1, 3, 5, 7-12, and 18.
As discussed above, Mr. Gayne grouped the Accused Group 3 Products into five different
types (i.e., Type-A, Type-B, Type-C, Type-D, Type-E) and selected a representative product for
each type. Gayne Decl. at ¶¶ 8-9. From that set, Mr. Gayne selected three Representative Group 3
Products: one TN-225 model, one TN-227 model, and one TN-760 model. Id. at ¶ 111. Mr.
Gayne compared the Representative Group 3 Products to various asserted claims of the ’387
patent.
Mr. Gayne provided a detailed, limitation-by-limitation analysis showing how, in his
opinion, the Representative Group 3 Products meet the limitations of various asserted claims of
the ’387 patent. Gayne Decl. at ¶¶ 282-386. Mr. Gayne also provided detailed, annotated claim
charts illustrating his analysis. The organization of Mr. Gayne’s analysis is summarized below.
PUBLIC VERSION
PUBLIC VERSION
Accused Group 3 Products — ’387 patent
Respondents Model Type Representative Claim Chart
Product
AMI, Do It TN-225 Type-A Arthur Imaging- | Gayne Decl. Ex. X
Wiser, branded TN-225
Ecoolmart,
Smartjet, Super
Warehouse
Aster, Intercon, | TN-225 Type-B Arcon-branded Gayne Decl. Ex. AA
TPrint, Eco TN-225
Imaging
Globest TN-225 Type-C V4ink-branded Gayne Decl. Ex. AD
TN-225
Greencycle,I8, | TN-225 Type-D Greencycle- Gayne Decl. Ex. AG
Ikong, Solong, branded TN-225
Xiaohui
LD Products TN-225 Type-E Linkyo-branded _| Gayne Decl. Ex. AI
TN-225
AML, Globest, TN-227 Type-A Arthur Imaging-__| Gayne Decl. Ex. Y
Greencycle branded TN-227
Aster, Intercon, | TN-227 Type-B Arcon-branded Gayne Decl. Ex. AB
Eco Imaging TN-227
No remaining TN-227 Type-C E-Z Ink-branded | Gayne Decl. Ex. AE
respondents TN-227
AMI, Xiaohui, TN-760 Type-A Arthur Imaging Gayne Decl. Ex. Z
Ikong, branded TN-760
Ecoolmart,
Globest
Carlos Imaging, | TN-760 Type-B E-Z Ink-branded | Gayne Decl. Ex. AC
Eco Imaging, TN-760
Hongkong
Boze,?’ Super
Warehouse, LD
Products,
Greencycle, Do
It Wiser
Aster, Intercon, | TN-760 Type-C Arcon-branded Gayne Decl. Ex. AF
Print, 18, TN-760
Aztech, An An
Beauty
No remaining TN-760 Type-D V4ink-branded Gayne Decl. Ex. AH
respondents TN-760
37 Mr. Gayne included Greensky-branded toner cartridges, sold by Hongkong Boze, in the
Type-B Accused TN-760 Products. Gayne Decl. at §§ 2, 9; Ex. 34-AC.
132
133
As detailed in this record, the accused TN-225 and TN-227 products meet each limitation
of claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Gayne Decl. at ¶¶ 282-386, Exs. X, Y, Z, AA,
AB, AC, AD, AE, AF, AG, AH, AI. The accused TN-225 and TN-227 products are sold by the
respondents indicated above in the chart in section V.A., tiled Accused Group 3 Products. The
record additionally shows the accused TN-760 products meet each limitation of claims 1, 3, 5, 7-8,
and 10 of the ’387 Patent. Id. The accused TN-760 products are sold by the respondents indicated
in the Accused Group 3 Products chart in section V.A. above.
Accordingly, Brother has presented substantial, reliable, and undisputed evidence that
respondents An An Beauty, Aztech, AMI, Carlos Imaging, Do It Wiser, Eco Imaging, Ecoolmart,
Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong, Intercon, Aster, IPrint, LD Products,
Smartjet, Super Warehouse, and Xiaohui infringe the claims of the ’387 patent asserted by Brother
against their respective products. Based on the undisputed record evidence, I conclude Brother is
entitled to summary determination to that effect.
VI. CONCLUSIONS OF LAW
1. The Commission has personal jurisdiction over the parties, subject-matter jurisdiction over
the investigation, and in rem jurisdiction over the accused products.
2. The importation requirement of section 337 is satisfied with respect to the Accused
Products.
3. The Accused Products of respondents AMI, Aster, Do It Wiser, Eco Imaging, Ecoolmart,
Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Solong, Smartjet, Super
Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,785,093 asserted against
those respective products.
4. The Accused Products of respondents AMI, Aster, Do It Wiser, Eco Imaging, Ecoolmart,
Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Solong, Smartjet, Super
Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,575,460 asserted against
those respective products.
5. The Accused Products of respondents An An Beauty, Aztech, AMI, Billiontree, Carlos
Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8,
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Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket, Smartjet, Super
Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,568,856 asserted against
those respective products.
6. The Accused Products of respondents An An Beauty, Aztech, AMI, Billiontree, Carlos
Imaging, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8,
Ikong, Solong, Intercon, Aster, IPrint, LD Products, Mangoket, Smartjet, Super
Warehouse, and Xiaohui infringe the claims of U.S. Patent No. 9,632,456 asserted against
those respective products.
7. The Accused Products of respondents An An Beauty, Aztech, AMI, Carlos Imaging, Do It
Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Solong,
Intercon, Aster, IPrint, LD Products, Smartjet, Super Warehouse, and Xiaohui infringe the
claims of U.S. Patent No. 9,846,387 asserted against those respective products.
8. A domestic industry exists within the United States related to articles protected by U.S.
Patent No. 9,785,093.
9. A domestic industry exists within the United States related to articles protected by U.S.
Paten U.S. Patent No. 9,568,856.
10. A domestic industry exists within the United States related to articles protected by U.S.
Patent No. 9,632,456.
11. A domestic industry exists within the United States related to articles protected by U.S.
Patent No. 9,846,387.
12. A violation of section 337 has occurred based on the importation or sale of articles that
infringe the asserted claims of U.S. Patent No. 9,785,093.
13. A violation of section 337 has occurred based on the importation or sale of articles that
infringe the asserted claims of U.S. Patent No. 9,575,460.
14. A violation of section 337 has occurred based on the importation or sale of articles that
infringe the asserted claims of U.S. Patent No. 9,568,856.
15. A violation of section 337 has occurred based on the importation or sale of articles that
infringe the asserted claims of U.S. Patent No. 9,632,456.
16. A violation of section 337 has occurred based on the importation or sale of articles alleged
to infringe the asserted claims of U.S. Patent No. 9,846,387.
VII. RECOMMENDED DETERMINATION ON REMEDY & BOND
I must issue a recommended determination concerning the appropriate remedy in the event
that the Commission finds a violation of section 337 and I must recommend the amount of bond
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to be posted for importation during any Presidential review of the Commission’s action. See
19 C.F.R. § 210.42(a)(l)(ii).
A. General Exclusion Order
The Commission “focus[es] principally on the statutory language itself” when determining
whether to issue a general exclusion order. Certain Ground Fault Cir. Interrupters & Prod.
Containing Same, Inv. No. 337-TA-615, Comm’n Op. at 25 (Mar. 26, 2009) (“Ground Fault Cir.
Interrupters I”). Under section 337(d)(2), a general exclusion order is warranted in either of two
circumstances: (1) when “an exclusion order limited to products of named persons” would be
circumvented, or (2) when “there is a pattern of violation of this section and it is difficult to identify
the source of infringing products.” 19 U.S.C. § 1337(d)(2)(A) and (B). Certain Cigarettes and
Packaging Thereof, Inv. No. 337 TA-643, Comm’n Op. at 24 (Oct. 1, 2009) (“Cigarettes”).
When some respondents default without appearing but other respondents appear and
contest the complaint, section 337(d)(2) specifies additional conditions for issuing a general
exclusion order. Pocket Lighters, Inv. No. 337-TA-1142, Initial Determination at 40 (Public Vers.)
(Feb. 12, 2020) (EDIS Doc. ID 706458), not reviewed in pertinent part, EDIS Doc. ID 708631. A
general exclusion order under section 337(d)(2) must rest upon a violation established by
substantial, reliable, and probative evidence. Id.
In the present investigation, some of the respondents appeared in, and contested, the
investigation, while other respondents failed to appear. See supra part I.B.2. Under these
circumstances, issuance of a general exclusion order under section 337(d)(2) is appropriate. See
Certain Toner Cartridges, & Components Thereof, 337-TA-918 (“Toner Cartridges IV”),
Comm’n Opinion at 5 (finding that the issuance of a general exclusion order under section
337(d)(2) was appropriate when not all respondents failed to appear to contest the investigation).
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1. Circumvention of Limited Exclusion Orders
A limited exclusion order restricts the activities of named respondents but not others.
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1356-57 (Fed. Cir. 2008). If the
evidence shows that named respondents would circumvent a limited exclusion order, a general
exclusion order is appropriate. See Certain Ground Fault Cir. Interrupters & Prod. Containing
Same, Inv. No. 337-TA-739, Comm’n Op. at 88-89, 2012 WL 2394435 at 56 (June 8, 2012)
(“Ground Fault Cir. Interrupters II”) (finding a general exclusion order was appropriate based on
evidence that named respondents would circumvent a limited exclusion order by changing their
corporate identity). Here, there is substantial evidence that a general exclusion order is necessary
to prevent Respondents named in this investigation from circumventing a limited exclusion order.
The undisputed record in this investigation closely tracks the facts of prior Commission
investigations into the same industry. For instance, in Investigation No. 337-TA-829 (“Toner
Cartridges III”), the administrative law judge determined, and the Commission affirmed, that “it
[is] common for manufacturers and sellers of aftermarket toner cartridges to do business under
more than one name,” and that “foreign aftermarket toner cartridge manufacturers have the
capacity to replicate their operations so as to appear to be a new business in a matter of months.”
Toner Cartridges III, Inv. No. 337-TA-829, Initial Determination at 120 (EDIS Doc. ID 505712).
The record here bears out such a capacity: the parent company of the sole remaining respondent
in this investigation, the Aster Group, was set up in March 2011 by management of a company
that entered into a consent order stipulation in investigation 337-TA-731. Toner Cartridges V,
Joint Stipulation Regarding Remedy at ¶ 12-18 (EDIS Doc. ID 656538) and Initial Determination
at 120 (Feb. 28, 2013) (EDIS Doc. ID 505712). The new entity was mass producing infringing
toner cartridges in its factory within a month. Id. This is evidence that “th[e] same sort of scenario
could repeat itself if another limited exclusion order issued.” Toner Cartridges III, Initial
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Determination at 120 (Feb. 28, 2013) (relying on these same facts as to Aster); see also Certain
Ink Cartridges & Components Thereof, Inv. No. 337-TA-946 (“946 Investigation”), Comm’n Op.
at 7 (June 29, 2016) (EDIS Doc ID 584864) (relying on previous efforts to circumvent a general
exclusion order as evidence of likelihood of circumvention in subsequent section 337
investigation).
As in prior investigations in this industry, such as Toner Cartridges IV , Inv. No.
337-TA-918, Comm’n Op. at 7 (Oct. 1, 2015), several of the Respondents here sell Accused
Products under multiple names on Amazon.com. See, e.g., Ex. 5 at ¶¶ 3.34, 3.39, 3.53, 3.62, 3.69,
3.78, 3.148; Exs. 5-36, 5-41, 5-66, 5-77, 5-87, 5-99, 5-186 (examples of Amazon storefronts of
respondents); Globest Import. Stip. at ¶¶ 6, 7 (Globest admission of importation through
Amazon.com). If limited exclusion orders were directed to the entities named as Respondents in
this investigation, it is likely that the same entities would continue online sales and importation
using different names.
In addition, based on unrebutted evidence, I find that many of the Respondents have
engaged in business practices deliberately designed to mask their identities, which makes
enforcement of a limited exclusion order difficult. For example, Respondents Carlos Imaging,
Eco Imaging, Ikong, and Intercon operate their businesses from rented personal mailboxes at mail
and shipping stores (e.g., UPS Stores). See Ex. 5 at ¶ 3.41 (Carlos imaging is registered to a PMB);
Ex. 5-42 (Carlos Imaging California Statement of Information) (Nov. 4, 2016)); Ex. 5-43 (Google
Maps Street View of Carlos Imaging showing UPS store (Mar. 2018)); Ex. 5 at ¶ 3.50 (Eco
Imaging is registered to a PMB); Ex. 5-60 (Eco Imaging corporate registration); Ex. 5-63 (Google
Maps Street View of Eco Imaging showing UPS store); Ex. 5 at ¶ 3.77 (Ikong is registered to a
PMB); Ex. 5-96 (Ikong registration); Ex. 5-98 (Google Maps Street View of Ikong showing ‘Mail
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and More’ store); Ex. 5 at ¶ 3.82 (Intercon is registered to a PMB); Ex. 5-101 (Intercon
registration); Ex. 5-103 (Google Maps Street View of Intercon showing UPS store); see supra part
I.B.2.c). The use of rented personal mailboxes obviates the cost of setting up a brick-and-mortar
storefront or warehouse, thereby making it easier to set up a new business with a different name
and circumvent a limited exclusion order. Many of the Respondents also “do business under
multiple names, and create an array of subsidiaries and changing corporate profiles, activities
which make it difficult to enforce intellectual property rights against them.” Toner Cartridges III,
Comm’n Op. at 6-7 (Jul. 29, 2013). There is substantial, unrebutted evidence such practices are
widespread in the industry:
• Mangoket shares executives with EPS, and both sell EPS-branded products. Ex. 5
at ¶ 3.92, 3.95, 3.98; Exs. 5-112 (EPS corporate registration), 5-113 (Mangoket
corporate registration), 5-115 (Mangoket storefront on eprintersolution.com).
• Do It Wiser is a single registered entity that conducts business through multiple
websites with differing names like doitwiser.com and imagetoner.com. Ex. 5 at ¶
3.46-3.48 (Do It Wiser operates through several websites); Exs. 5-51 (trademark
registration for “Do It Wiser” Mark), 5-52 (Accused Products with EPS brand on
doitwiser.com), 5-54 (Accused Products with EPS Brand on imagetoner.com), 5-55
(FAQ from imagetoner.com listing “help@doitwiser.com” as the contact email).
• LD Products is a single registered entity that sells functionally identical infringing
products under more than one brand name. Ex. 5 at ¶ 3.97-3.101, 7.80, 7.82; Ex.
5-121 (trademark registration for “LD” mark listing owner as “LD Products, Inc.”),
5-125 (trademark registration for “Speedyinks” mark listing owner as “LD
Products, Inc.”).
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• Certain of An An Beauty’s and Billiontree’s Accused Products shipped from
different unregistered California entities (i.e., An An Mei and Palmtree) at the same
address. Ex. 5 at ¶ 3.16, 3.40, 12.27; Ex. 5-23 (photo of Shipping Label for
CMYBabee branded product), 5-24 (photo of shipping label for “Toner Kingdom”
branded product). The operations are so intermingled that on at least one occasion,
products purchased from An An Beauty arrived in “Toner Kingdom” brand box,
but the box contained a “CMYBabee”-branded product. Ex. 5 at ¶ 12.27; Ex. 5-305
(“Toner Kingdom” branded box in which “CMYBabee” branded Accused Product
was shipped).
• A single person—Wang Zhidong—is the registrant on the U.S. trademarks used on
the Accused Products of Ikong, Smartjet, Solong, and Xiaohui. Ex. 5-92
(registration for Office World mark), 5-95 (registration for IKONG mark), 5-147
(registration for MIROO mark), 5-183 (registration for “JARBO” mark).
These facts show a widespread pattern within the industry generally, and among the Defaulting
Respondents particularly, of operating practices that hinder or defeat the efficacy of limited
exclusion orders directed only to named respondents. See Toner Cartridges III, Comm’n Op. at
6-7 (entering a general exclusion order where “defaulting respondents typically do business under
multiple names, and create an array of subsidiaries and changing corporation profiles.”).
In sum, I find based on the record evidence of the past and present business practices of
the Respondents that a limited exclusion order would be easily circumvented. See Certain Indus.
Automation Sys. & Components Thereof Including Control Sys., Controllers, Visualization
Hardware, Motion & Motor Control Sys., Networking Equip., Safety Devices, & Power Supplies,
Inv. No. 337-TA-1074, Comm’n Op. at 7 (Apr. 23, 2019) (“Respondents’ use of multiple different
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entities to sell and import products supports a finding that a limited exclusion order would be easily
circumvented.’”).
2. Pattern of Violation of Section 337
Additionally and independently, I find the record shows an undisputed a pattern of
violation of section 337. This investigation initially named 32 respondents, and all of those that
were successfully served were found in violation or stipulated to a consent order. Toner Cartridges
III, Initial Determination at 121 (Feb. 28, 2013) (“Given the number of respondents involved, the
activities of the defaulting respondents and their suppliers alone would be sufficient to demonstrate
a pattern of violation.”). That alone demonstrates a widespread pattern of violation of section 337.
But the Respondents here do not reflect the full scope of the infringing industry. The record
shows many Respondents purchased their accused products from non-parties. See, e.g., Ex. 52
(“Linkyo purchases the products … from as finished goods.”). There also
are numerous “reseller” customers in the business of distributing infringing toner cartridges in the
United States. Non-party identifies over 460 U.S. customers of Accused Products in the
United States, including Respondents . Ex.
59 ( Customer List), at 1, 3, 4, 6. another non-party supplier, identifies nineteen
customers of Accused Products in the United States, including Respondents
. Ex. 57 at ¶ 6 (Jan. 17, 2020) (EDIS Doc. ID 699551). And
infringing respondent Aster acknowledges that it supplies Accused Products to at least eight of the
Defaulting Respondents—An An Beauty, Aztech, Eco Imaging, Hongkong Boze, I8, Intercon,
IPrint, and Mangoket. Ex. 38, Response of Aster Graphics, Inc. to Complaint and Notice of
Investigation at ¶ 3.26 (Oct. 18, 2019) (EDIS Doc ID 691633).
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This multiplicity of suppliers and distributors of infringing toner cartridges qualitatively
demonstrates a widespread pattern of violation. The record also quantifies the extent of the
infringement: according to data furnished by Brother, Brother’s authentic branded products
command Ex. 58 (Raw Sales Data); Ex.
60 (Analysis of Raw Sales Data). Indeed, the Accused Products sold
comparable cartridges in both fiscal years 2017 and 2018. See Ex. 60.
Respondent E-Z Ink’s Accused 221/225 Products alone
in the United States during that period. Id.
The record also contains substantial evidence that the source of these infringing products
is difficult to identify. As found in previous investigations of this industry, “in the toner cartridge
market, it is difficult to trace the origin of a particular import even when all of the players involved
are operating honestly.” Toner Cartridges III, Inv. No. 337-TA-829, Initial Determination at 123
(EDIS Doc. ID 505712). The record in this investigation shows that statement is still true.
Aster, for example, offers private labeling and custom packaging to its customers. Ex. 5-31
(Aster website). As Aster describes it, “[p]rivate label service provides you the opportunity to
stick your own label, which contains your logo, company name, reorder number and contact
information.” Id. “This legitimate practice inevitably obscures the identity of the cartridges’
original manufacturer, making enforcement of a limited exclusion order difficult at best.” Toner
Cartridges III, Inv. No. 337-TA-829, Initial Determination at 124 (EDIS Doc. ID 505712).
Adding to the confusion, respondents An An Beauty, Aztech, Billiontree, Eco Imaging, Globest,
Hongkong Boze, I8, IPrint, and Super Warehouse each package their Accused Products in generic
boxes marked only as “toner,” “toner cartridge,” “premium toner cartridge,” “laser toner
cartridge,” or “laser printer toner cartridge,” omitting any identifiable branding tying their products
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to their origins. See Ex. 5, Amended Complaint of Brother at ¶ 12.16; Ex. 5-299 (images of
exemplary generic packaging).
Ex 5-299 (excerpted). And as Aster’s website offers custom packaging bearing whatever
information the seller chooses to use, enabling resellers to deliberately disguise the true
manufacturer. See, e.g., Ex. 5-31. Such practice “mak[es] it easier” for the manufacturer “to evade
enforcement of an LEO.” Toner Cartridges II, Comm’n Op. at 5 (Oct. 5, 2011) (EDIS Doc ID
460756). That Aster prominently offers such a service implies that it is commonly requested and
used, indicating a pattern of evasion.
The channels of commerce Respondents use also help conceal the identity of infringers.
As discussed above, the Defaulting Respondents sell the Accused Products through popular
e-commerce sites like Amazon.com, eBay.com, and Alibaba.com. See, e.g., Ex. 5 at ¶ 3.11,
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Exs. 5-18, 5-222, Ex. 35 at ¶ 3.11, AMI Import. Stip. at ¶ 7, 8 (Arthur Imaging branded accused
products sold through Amazon.com); Ex. 5-22, 5-224 (CMYBabee branded accused products sold
through Amazon.com); Ex. 5 at ¶ 12.11, Ex. 5-298 (Alibaba.com listings for Accused Products);
Ex. 5 at ¶ 12.10, Ex. 5-296 (eBay.com listing of Accused Products). As the Commission has
previously found, “Major Internet websites such as Amazon.com, Craigslist.org, and Alibaba.com
provide retailers of aftermarket toner cartridges with dedicated, flexible infrastructure to sell
directly to U.S. consumers without revealing the true source of such cartridges.” Toner
Cartridges IV, Inv. No. 337-TA-918, Comm’n Op. at 11 (Oct. 1, 2015). The record here bears
that out: AMI, Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8,
Ikong, Inercon, IPrint, Mangoket, Solong, Smartjet, SuperWarehouse, and Xiahui all shipped
Accused Products through an Amazon fulfillment center, with only the address of the fulfillment
center appearing on the shipping materials. AMI Import. Stip. at ¶ 7; Globest Import. Stip. at ¶ 6;
Exs. 5-300, 5-301 (packaging labels for Accused Products shipped from Amazon fulfillment
centers).
In sum, Brother has established by substantial, reliable, and probative evidence a pattern
of violation of section 337 by sources that are difficult to identify. See 19 U.S.C. § 1337(d)(2)(B);
see also Certain Lighters, Inv. No. 337-TA-575, Comm’n Op. at 7-9 (Public Vers.) (Aug. 30,
2007) (EDIS Doc. ID 281618) (finding a general exclusion order is appropriate based on
widespread unauthorized online sales and difficulty in identifying the source of infringing
products). I therefore recommend the Commission issue a general exclusion order in this
investigation should it find a violation of section 337.
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B. Limited Exclusion Orders
Section 337(d) provides that “[i]f the Commission determines, as a result of an
investigation under this section, that there is a violation of this section, it shall direct that the articles
concerned, imported by any person violating the provision of this section, be excluded from entry
into the United States. . . .” 19 U.S.C. § 1337(d). The undisputed evidence supports a
determination that Respondents have violated section 337, so the condition precedent for limited
exclusion orders has been satisfied. Should the Commission find a violation and determine not to
issue a general exclusion order, I recommend that the Commission issue limited exclusion orders
directed to respondents Aster, An An Beauty, AMI, Aztech, Billiontree, Carlos Imaging, Do It
Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint,
LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui. All other Respondents
are subject to consent orders entered earlier in this investigation.
C. Cease and Desist Order
In addition to an exclusion order, section 337(f) authorizes the Commission to order those
found violating section 337 “to cease and desist from engaging in the unfair methods or acts
involved.” 19 U.S.C. § 1337(f). A cease and desist order is warranted when a respondent maintains
a commercially significant inventory of the infringing products in the United States. See Certain
Elec. Skin Care Devices, Brushes & Chargers Therefor, & Kits Containing the Same, 337-TA-
959, Comm’n Op. at 26 (Feb. 13, 2017).
Brother seeks cease and desist orders against the respondents with addresses or operations
based in the United States, namely Aster, AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco
Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon, IPrint, LD
Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui.
PUBLIC VERSION
PUBLIC VERSION
Aster, the sole remaining respondent, stipulated to having the following domestic
inventories of Accused Products:
Accused Aster Product Domestic Inventory
221/225
223/227
420/450
630/660
730/760/770
Total
See Aster Stip. at Exhibit A. I find that this inventory is significant and could be used to circumvent
an exclusion order, particularly in view of the pattern of violation set forth above with respect to
Aster and its resellers. See supra part VIIA.2.
With respect to respondents AMI, Billiontree, Carlos Imaging, Do It Wiser, Eco Imaging,
Ecoolmart, Globest, Greencycle, I8, Ikong, Intercon, IPrint, LD Products, Mangoket, and Super
Warehouse, Brother has adduced substantial, undisputed evidence that each operates from
addresses within the United States. See supra part I.B.2.c). Given that each of those respondents
defaulted, the commercial significance of their domestic inventories may be inferred, and a cease
and desist order is appropriate. See Certain Arrowheads with Deploying Blades & Components
Thereof & Packaging Therefor, Inv. No. 337-TA-977, Comm’n Op. at 18 (Apr. 6, 2017).
And with respect to respondents AMI, Do It Wiser, Eco Imaging, Ecoolmart, Globest,
Greencycle, Hongkong Boze, I8, Ikong, Inercon, [Print, Mangoket, Solong, Smartjet, Super
Warehouse, and Xiahui, Brother has adduced substantial, undisputed evidence that each fulfills
orders through Amazon.com fulfillment centers located in the United States. AMI Import. Stip. at
4 7; Globest Import. Stip. at § 6; Exs. 5-300, 5-301 (packaging labels for Accused Products shipped
from Amazon fulfillment centers). Because each of these respondents defaulted, their use of
Amazon fulfillment centers in the United States allows an inference of commercially significant
145
146
domestic inventory. See Certain Hand Dryers & Housing for Hand Dryers, Inv. No. 337-TA-
1015, Comm’n Op. at 11 (Oct. 30, 2017) (“evidence that infringing . . . products sold on
Amazon.com are fulfilled from an Amazon.com facility in Kentucky . . . supports the inference
that [foreign defaulting respondents] maintain a commercially significant inventory of infringing
articles in the United States” and that issuance of a cease and desist order is appropriate).
Accordingly, should the commission find a violation and determine, I recommend that the
Commission issue cease and desist orders to respondents Aster, AMI, Billiontree, Carlos Imaging,
Do It Wiser, Eco Imaging, Ecoolmart, Globest, Greencycle, Hongkong Boze, I8, Ikong, Intercon,
IPrint, LD Products, Mangoket, Smartjet, Solong, Super Warehouse, and Xiaohui.
D. Bond During Presidential Review
In the event that the Commission determines to issue a remedy, the Commission must
determine the amount of bond to be required of a respondent during the 60-day Presidential review
period. See 19 U.S.C. §1337(j)(3). The purpose of the bond is to protect the complainant from
any injury. See 19 C.F.R. §§ 210.42(a)(1)(ii), 210.50(a)(3).
When reliable price information is available, the Commission has often set the bond by
eliminating the differential between the domestic product and the imported, infringing product.
See Microsphere Adhesives, Processes for Making Same, & Prods. Containing Same, Including
Self-Stick Repositionable Notes, Inv. No. 337-TA-366, USITC Pub. 2949 (Dec. 8, 1995), Comm’n
Op. at 24. However, where it is difficult or impossible to calculate a bond based upon price
differentials, and particularly where the respondents fail to provide discovery, the Commission has
set the bond at 100 percent of the entered value of the infringing imported product. See, e.g., Video
Game Sys., Comm’n Op. at 5; Certain Oscillating Sprinklers, Sprinkler Components, & Nozzles,
Inv. No. 337-TA-448, Limited Exclusion Order at 4-6, USITC Pub. No. 3498 (Mar. 2002) (EDIS
PUBLIC VERSION
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Doc. ID 60448) (setting bond at 100% of entered value for products of defaulting respondent).
Further, the Commission may also set a bond rate of over 100% where necessary “to ensure it
would completely offset any competitive advantage” enjoyed by the infringing goods. See, e.g.,
Certain Two-Handled Centerset Faucets & Escutcheons, & Components Thereof, Inv. No. 337-
TA-422, Comm’n Op. at 10-11 (June 26, 2000) (EDIS Doc. ID 52315) (setting 264% bond rate);
Certain Devices for Connecting Computers Via Telephone Lines, Inv. No. 337-TA-360, Comm’n
Op. at 12, USITC Pub. No. 2843 (Dec. 1994) (EDIS Doc. ID 216950) (setting 346% bond rate);
Certain Cube Puzzles, Inv. No. 337-TA-112, Comm’n Op. at 35, USITC Pub. 1334 (Jan. 1983)
(EDIS Doc. ID 217890) (setting 600% bond rate).
In appropriate circumstances, the Commission sets different bond rates for different
respondents. See, e.g., Certain Foam Footwear, Inv. No. 337-TA-567, Comm’n Op. at 9 (Aug. 2,
2011) (EDIS Doc. ID 455852); Certain Coaxial Cable Connectors & Components Thereof &
Prod. Containing Same, 337-TA-650, Comm’n Notice at 2 (Sept. 13, 2011) (EDIS Doc ID
459059). The Commission may also set different bond rates for different products of the same
respondent. See Certain Magnetic Data Storage & Tape Cartridges Containing the Same (II), Inv.
No. 337-TA-1076, Comm’n Op. at 67 (June 20, 2019) (EDIS Doc. ID 679042).
Brother, AMI, Aster, and Globest stipulated to different bond rates for different Accused
Products, as shown below, based on the calculated price differentials for those products. AMI
Import. Stip., Ex. A; Aster Import. Stip., Ex. A; Globest Import. Stip., Ex. A.
As these bond rates were calculated using reliable data and the parties agreed to the percentages, I
PUBLIC VERSION
148
recommend entry of bond at the above-referenced bond rates.
Given that the remaining respondents defaulted and failed to provide discovery into their
pricing, a bond of 100% of the entered value of infringing toner cartridges and components thereof
is appropriate. See, e.g., Video Game Sys., Comm’n Op. at 5. This amount should be enough to
prevent any harm to Brother during the period of Presidential review.
VIII. INITIAL DETERMINATION
I hereby certify to the Commission this Initial Determination and the Recommended
Determination.
The Secretary shall serve the confidential version of this Initial Determination upon
counsel who are signatories to the Protective Order (Order No. 1) issued in this investigation. A
public version will be served at a later date upon all parties of record.
Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
§ 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review
of the Initial Determination or certain issues therein.
Within seven days of the date of this document, the parties must jointly submit a statement
to Cheney337@ustic.gov stating whether or not each seeks to have any portion of this document
redacted from the public version. Should either or both parties seek to have any portion of this
document redacted from the public version thereof, the parties shall attach a copy of a joint
proposed public version of this document indicating with red brackets any portion asserted to
contain confidential business information.38 To the extent possible, the proposed redactions
38 If the parties submit excessive redactions, they may be required to provide an additional
written statement, supported by declarations from individuals with personal knowledge,
PUBLIC VERSION
149
should be made electronically, in a PDF of the issued order, using the “Redact Tool” within Adobe
Acrobat, wherein the proposed redactions are submitted as “marked” but not yet “applied.” The
parties’ submission concerning the public version of this document should not be filed with the
Commission Secretary.
SO ORDERED.
justifying each proposed redaction and specifically explaining why the information sought to be
redacted meets the definition for confidential business information set forth in Commission Rule
201.6(a). 19 C.F.R. § 201.6(a).
PUBLIC VERSION
CERTAIN TONER CARTRIDGES, COMPONENTS
THEREOF, AND SYSTEMS CONTAINING SAME
Inv. No. 337-TA-1174
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has
been served via EDIS upon the Commission Investigative Attorney, Jennifer Dienes, Esq.,
and the following parties as indicated, on August 10, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Brother Industries, Ltd.,
Brother International Corporation (U.S.A.), and Brother
Industries (U.S.A.), Inc.:
Lisa M. Kattan, Esq.
BAKER BOTTS L.L.P.
700 K Street, NW
Washington, DC 20001
Email: lisa.kattan@bakerbotts.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondent Aster Graphics, Inc.:
Barbara A. Murphy, Esq.
FOSTER, MURPHY, ALTMAN & NICKEL, PC
1150 18th Street NW, Suite 775
Washington, DC 20036
Email: bmurphy@fostermurphy.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
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