• ITC Issues Public Version of Opinion in Certain Printing and Imaging Devices (337-TA-690)
  • February 25, 2011 | Authors: John F. Presper; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • Further to our January 27, 2011 post, on February 17, 2011, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming-in-part and reversing-in-part ALJ Robert K. Rogers, Jr.’s September 23, 2010 Initial Determination (“ID”) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690) and terminating the investigation with a final determination of no violation of Section 337.

    The ID had set forth that Respondents Oki Data Corporation and Oki Data Americas, Inc. (collectively, “Oki Data”) violated Section 337 by infringing U.S. Patent No. 5,863,690 (the ‘690 patent), but that there was no violation with respect to U.S. Patent Nos. 6,212,343 (the ‘343 patent), 6,209,048 (the ‘048 patent), 6,388,771 (the ‘771 patent) and 5,746,866 (the ‘866 patent) in the investigation that was based on a complaint filed by Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc (collectively, “Ricoh”).  On November 22, 2010, the Commission determined to review the ID as to the ‘343 and ‘690 patents.

    The technology at issue relates to electrophotographic multifunction printers (“MFPs”) that have scanning, printing, copying, and networking capabilities.  The ‘343 and ‘690 patents involve different aspects of MFPs ¿ the ‘343 patent relates to a toner process cartridge with a specific configuration that prevents toner from leaking; the ‘690 patent is directed to the surface characteristics of fuser rollers, how those characteristics are measured, and how the fuser rollers interact with the toner.  Ricoh accused Oki Data’s image drums and MFPs that use same of infringing claims 18-21 of the ‘343 patent, and accused Oki Data’s fuser rollers, fuser kits, and devices that use same of infringing claims 1, 2, 5, 6, 9, 10, 13 and 14 of the ‘690 patent.

    Regarding the ‘343 patent, the Commission agreed with ALJ Rogers that “a direction orthogonal to a longitudinal direction of the developing roller” in claims 18, 20 and 21 means “a direction that is at a right angle to a lengthwise direction of the developing roller” (i.e., any direction that is perpendicular to any reference longitudinal direction), but reversed his finding that the accused products do not meet this limitation.  The Commission also determined that the ALJ erroneously limited the scope of the term “a lower edge” in claims 18, 19 and 21 to refer only to the furthermost tip of the blade, and thus modified the ALJ’s construction to cover a sharp intersection of planes in the blade.  Under this construction, the Commission again reversed the ALJ’s finding that the accused products do not satisfy this limitation, determining that the “elbow” of the L-shaped permanent bend in the accused products constitutes “a lower edge” of the blade that contacts the developing roller.  However, the Commission affirmed ALJ Rogers’ determination that none of the Oki Data products except for the 9600 model infringe on the modified grounds that the accused products do not have a “narrow-width part configured to have a length that enables the narrow-width part to be bent.”  As to the 9600 model, the Commission found no clear error in the ALJ’s determination that these products infringe the asserted claims of the ‘343 patent.

    Regarding domestic industry, the Commission affirmed ALJ Rogers’ finding that Ricoh’s C200 series printers do not satisfy the technical prong since Ricoh failed to show that the narrow-width portion of the blade in the C200 series is bent between the side seals or will bend between the side seals when the developing roller is assembled.  Rather than bend between the resilient side seals as Ricoh argued, the Commission determined that it is possible that the blade remains on top of the side seals so as to compress them without actually bending between them when forced by the developing roller.  Moreover, the Commission determined that any bending that occurs by contact with the developing roller occurs in the wide-width part of the blade rather than the narrow-width part as required by the asserted claims of the ‘343 patent.

    In addition, the Commission affirmed ALJ Rogers’ determination that Japanese Patent Application No. 61-185772 (the ‘772 application) does not anticipate the asserted claims of the ‘343 patent because (1) the “step part” in the ‘772 application is not “downstream of a contact point of the blade and the roller part” as required by the claims, and (2) no “lower edge” of the blade contacts the roller of the ‘772 application in the nip portion G therein.

    With respect to the ‘690 patent, the Commission reversed ALJ Rogers’ determination that Oki Data failed to prove that its OL400e fuser roller anticipated claims 1, 5, 9 and 13.  Specifically, the Commission found clear and convincing evidence that the OL400e rollers that existed prior to the ‘690 patent inherently anticipate the asserted claims ¿ regardless of whether these rollers were exactly the same as those tested by Ricoh’s expert ¿ on the grounds that (1) it is undisputed that the OL400e rollers were coated with PFA since before the effective filing date of the ‘690 patent, and thus inherently meet the claimed adhesion constant ratio; and (2) a Design Change Order showed that the center-line average roughness of the OL400e rollers was well below the claimed “less than about 3.0 µm” both before and after the design change, and thus met this limitation of claims 9 and 13 before the critical date of the ‘690 patent.

    Finally, Ricoh had relied on its service and repair expenses related to its C200 series printers and MFPs to meet the economic prong of the domestic industry for the ‘343 and ‘690 patents.  While noting that a complainant may satisfy the economic prong by demonstrating significant service and repair activities and investments with respect to the protected articles, and finding no reason to question the reliability of Ricoh’s service and repair figures, the Commission reversed the ALJ and determined that Ricoh failed to submit evidence substantiating the nature and significance of its activities regarding the articles protected by the asserted patents.  In particular, the Commission stated that the magnitude of the investment cannot be assessed without considering the nature and importance of the complainant’s activities to the patented products in the context of the marketplace or industry in question, which Ricoh failed to address.  Further, in view of the C200 printers having been manufactured entirely abroad and brought into the U.S. as complete products ready for sale (which Ricoh had ceased doing at least five months before filing the complaint), the Commission found that Ricoh submitted no evidence to show how its domestic activities added any value to the completed saleable product, or to demonstrate the nature and relative importance of its activities to the articles protected by the asserted patents.  In addition, the Commission observed that in Certain Male Prophylactics (Inv. No. 337-TA-546), relied on by the ALJ, the complainant’s domestic production and service activities were shown to add 34% of the value to the completed saleable product, whereas Ricoh’s services and repairs were purely post-sale and there is no evidentiary proof that such activities added value to the imported articles.  Accordingly, the Commission concluded that Ricoh did not show that a domestic industry exists with respect to the articles protected by the ‘343 and ‘690 patents.