HP & ITC READY TO TAKE ON ASIA-PACIFIC-MICROSYSTEMS IN TRIAL

[Anonymous]

HP & I.T.C. READY TO TAKE ON ASIA-PACIFIC-MICROSYSTEMS IN TRIAL

HP’s ITC Complaint against Asia Pacific Microsystems Will Proceed to Trial
Asia Pacific Microsystems (APM), a Taiwan-based firm that manufactures microelectromechanical systems (MEMS) wafers and print heads, has failed in its last-ditch efforts to persuade the U.S. International Trade Commission (ITC) to dismiss HP’s inkjet cartridge patent-infringement complaint, or 337 investigation, against it. The trial phase of investigation number 337-TA-723, “Certain Inkjet Cartridges with Printheads and Components Thereof,” is set to start on Monday, March 14.
Background

HP filed this particular ITC complaint in May 2010. The original roundup of respondents in this complaint included:

    * Asia Pacific Microsystems, Inc. of Taiwan;
    * Mextec, doing business as Mipo America Ltd. of Miami, FL;
    * MicroJet Technology Co., Ltd. of Taiwan;
    * Mipo International Ltd. of Hong Kong;
    * Mipo Science & Technology Co., Ltd. of China;
    * PTC Holdings Limited of Hong Kong; and
    * Sino Time Technologies, Inc., doing business as All Colors of Miami, FL.

The respondents are accused of violating U.S. patent numbers 6,234,598, 6,309,053, 6,398,347, 6,412,917, 6,481,817, and 6,402,279, which cover technology used in various HP integrated inkjet cartridges including the HP 21, HP 22, HP 27, HP 28, HP 54, HP 56, HP 57, HP 58, and HP 59. HP later moved to terminate the investigation into infringement of U.S. patent number 6,412,917, and the ITC granted this request.

APM is now the lone active respondent in the complaint. MicroJet Technology defaulted in this investigation. The Mipo respondents were terminated from the investigation—according to the ITC order, Mipo has been dissolved. HP has settled with Mextec and Sino Time Technologies. According to ITC documents, PTC Holdings Limited “has not fully participated in this investigation.” It is unclear whether the ITC has or will issue a default judgment against PTC.
APM Fails to Persuade

In November, Judge Robert K. Rogers, Jr., issued an order denying APM’s motion to dismiss the investigation and its motion for sanctions against HP because APM failed to comply with the “safe harbor” provision of a commission rule requiring APM to serve the motion to HP seven days prior to the motion being filed (see News Briefing, “HP’s Inkjet Cartridge Investigations before the ITC Plod Forward”). APM, however, subsequently filed another similar set of motions, seeking to have the case against it dismissed and seeking sanctions against HP. These motions, unfortunately, are confidential.

Judge Rogers’ December 23 ruling denying APM’s request for sanctions, however, was made public. Apparently, APM sought sanctions against HP based on the claim that HP did not have “an objectively reasonable basis to name APM as a respondent in this investigation.” APM asked for the dismissal of the investigation, its attorneys’ fees and other related expenses, and other sanctions, saying that HP’s complaint provided no proof that APM’s products are imported into the United States. For its part, HP claims that it was reasonable to name APM as a respondent and that its respondents are imported into the United States. HP claimed that APM manufactured infringing print heads, which were then used in MicroJet inkjet cartridges imported into the United States as well as other cartridges imported by the other respondents named in the complaint. Judge Rogers denied APM’s requests, saying that HP’s allegations regarding APM and MicroJet “were objectively reasonable under the circumstances” but noting that this order does not conclude that HP has satisfied any element of its Section 337 complaint.

On January 28, Judge Rogers also issued an order denying APM’s motion for a summary determination that it does not sell products for importation. The judge denied the order on the basis of there being “genuine dispute of material fact regarding whether or not APM knew or should have known that components sold to MicroJet are for use in inkjet cartridges that are imported into the U.S.”

Next, on February 11, Judge Rogers issued an order denying APM’s motion for a summary judgment on the issues of direct and indirect infringement of HP’s patents. APM said that HP’s expert witness had not offered the opinion that APM directly infringes any claims of the patents named in the complaint and that HP could not meet the requirements to prove indirect infringement “because APM has never offered to sell or sold within the United States, or imported into the United State, components of products that infringe HP patents.” The judge denied APM’s motion, pointing out as evidence in HP’s favor, “HP has cited evidence tending to show that APM knew about HP patents … that APM knew that MicroJet uses APM’s wafers to make HP-compatible printer cartridges … and that APM sought a written guarantee from MicroJet that its products were not being sold in the United States.”

There has been a flurry of additional activity from APM and HP lawyers in advance of the trial, with the two companies arguing about including/excluding various witnesses and other issues.

This case is potentially very significant for the non-OEM supplies industry. The patents that HP claims are infringed are used in some of HP’s most popular integrated inkjet cartridges, and almost all non-OEM inkjet supplies vendors offer a version of these cartridges. A limited exclusion order would prevent the importation and sale of cartridges and print heads manufactured, imported, or sold by the respondents and their affiliates. But HP is also asking for a general exclusion order, which would theoretically bar importation and sale of all cartridges and print heads that infringe one or more claims of the patents. Thus, this ITC investigation has the potential to affect all third-party supplies vendors selling non-OEM HP 21, HP 22, HP 27, HP 28, HP 54, HP 56, HP 57, HP 58, and HP 59 cartridges in the United States. Needless to say, a general exclusion order would be a big win for HP and would cost non-OEM supplies vendors a very popular and profitable line of products in the U.S. market.

[Author]

March 9, 2011 at 8:29 AM