UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN TONER SUPPLY
`CONTAINERS AND COMPONENTS
`THEREOF
`
`Inv. No. 337-TA-960
`
`Order No.4: INITIAL DETERMINATION
`Terminating the Investigation Based on a Consent Order Stipulation and
`Proposed Consent Order
`
`Pursuant to 19 C.F.R. § 210.21(c), respondents General Plastic Industrial Co., Ltd.
`
`("GPI") and Color Imaging, Inc. ("Color Imaging") filed an unopposed motion to terminate this
`
`investigation based on a consent order stipulation and proposed consent order. Motion Docket
`
`No. 960-001. Complainants Canon Inc.; Canon U.S.A., Inc.; and Canon \:,irginia, Inc. do not
`
`oppose the motion. See Mot. at 1, 5.
`
`Commission Rule 210.21(c) provides that "[a] motion for termination by consent order
`
`shall contain copies of any licensing or other settlement agreement, any supplemental
`
`agreements, and a statement that there are no other agreements, written or oral, express or
`
`implied between the parties concerning the subject matter of the investigation." 19 C.F.R.
`
`§ 210.21(c). The pending motion includes the following attachments: (1) a consent order
`
`stipulation signed by GPI and Color Imaging and (2) a proposed consent order. Further, it is
`
`stated that "[t]here are no agreements, written or oral, express or implied, between the parties
`
`concerning the subject matter of this investigation." Mot. at 4. The pending motion therefore
`
`satisfies the requirements of Commission Rule 210.21(c).
`
`1
`
`

`
`Commission Rule 210.21(c)(3) sets forth the requirements for a consent order stipulation.
`
`19 C.F.R. § 210.21(c)(3). It is determined that the consent order stipulation submitted with the
`
`pending motion satisfies the requ~rements set forth in Commission Rule 210.21 (c)(3).
`
`Commission Rule 210.21(c)(4) sets forth the requirements for a consent order. 19 C.F.R.
`
`§ 21O.21(c)(4). It is determined that the proposed consent order submitted with the pending
`
`motion satisfies the requirements set forth in Commission Rule 210.21(c)(4).
`
`Commission Rule 21 O.50(b )(2) provides that, in the case of a proposed termination by
`
`settlement agreement, consent order, or arbitration agreement, the parties may file statements
`
`regarding the impact of the proposed termination on the public interest, and the administrative
`
`law judge may hear argument, although no discovery may be compelled, with respect to issues
`
`relating solely to the public interest. 19 C.F.R. § 210.50(b)(2). The administrative law judge is
`
`, directed to consider and make appropriate findings "regarding the effect of the proposed
`
`settlement on the public health and welfare, competitive conditions in the U.S. economy, the
`
`production oflike or directly competitive articles in the United States, and U.S. consumers." See
`
`id.
`
`Movants state that "termination of this Investigation against Respondents and entry of the
`
`Proposed Consent Order is in the public interest, which favors the settlement of dispute to avoid
`
`needless litigation and to conserve resources." Mot. at 4. It is argued that "entry of the Proposed
`
`Consent Order will conserve the time and resources of both the Commission and the private
`
`parties since it removes Respondents from this Investigation." Id. at 4-5. It is further argued that
`
`"entry of the Proposed Consent Order will not impose an undue burden on the public health and
`
`welfare, competitive conditions in the United States economy, production oflike or directly
`
`competitive articles in the United States or United States' consumers." Id. at 5.
`
`2
`
`2
`
`

`
`Having reviewed the pending motion and the attachments thereto, the undersigned does
`
`not find any evidence that terminating this investigation as to General Plastic Industrial Co., Ltd.
`
`and Color Imaging, Inc. based on the consent order stipulation and proposed consent order would
`
`be contrary to the public interest.
`
`Accordingly, it is the initial determination of the undersigned that Motion No. 960-001 is
`
`granted. This investigation is terminated in its entirety.
`
`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 of the initial
`
`determination 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
`
`contained herein.
`
`DaVId P. Shaw
`Administrative Law Judge
`
`Issued: August 4, 2015
`
`3
`
`3
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of:
`
`CERTAIN TONER SUPPLY CONTAINERS
`AND COMPONENTS THEREOF
`
`Investigation No.
`337-TA-960
`
`RESPONDENTS GENERAL PLASTIC INDUSTRIAL
`CO., LTD.'S AND COLOR IMAGING, INC.'S
`UNOPPOSED MOTION TO TERMINATE
`INVESTIGATION BASED ON CONSENT ORDER
`STIPULATION AND PROPOSED CONSENT ORDER
`
`Pursuant to Commission Rule 21O.21(c)(1)(ii), 19 C.F.R. § 21O(c)(1)(ii),
`
`Respondents General Plastic Industrial Co., Ltd. ("GPI") and Color Imaging, Inc. ("Color
`
`Imaging") (collectively "Respondents") hereby move for the termination ofthis
`
`investigation as to GPI and Color Imaging and for the entry of the attached Proposed
`
`Consent Order.
`
`Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc.
`
`(collectively "Canon") filed a complaint ("Complaint") before the United States
`
`International Trade Commission ("Commission") on June 12,2015, alleging unfair acts
`
`in the importation into the United States, sale for importation into the United States, and
`
`sale in the United States after importation of certain toner supply containers and
`
`components thereof by GPI and Color Imaging that infringe one or more of claims 1, 7-9,
`
`4
`
`

`
`11, 16-18,29, and 38 of U.S. Pat. No. 8,909,094 (the "'094 Patent") and claims 1, 7-9,
`
`and 16 of U.S. Pat. No. 9,046,820 (the '''820 Patent") (collectively "Asserted Patents").
`
`As set forth in the accompanying Stipulation to Consent Order, Respondents
`
`stipulate and agree:
`
`1)
`
`Respondent GPI is a limited liability company organized and existing under
`
`the laws of Taiwan, with its principal place of business located at 50 Tzu Chiang
`
`Road, Wu-Chi Town, Taichung County, Taiwan.
`
`2)
`
`Respondent Color Imaging is a corporation organized and existing under
`
`the laws ofthe State of Georgia, with its principal place of business located at
`
`4350 Peachtree Industrial Blvd., Suite 100, Norcross, Georgia 30071.
`
`3)
`
`"Subject Articles" shall mean the toner supply containers identified in the
`
`Complaint as having come from GPI and/or Color Imaging (see, for example,
`
`Sections V and VI and Exhibits 8 to 13 of the Complaint), and any other toner
`
`supply containers that infringe one or more of claims 1, 7-9, 11, 16-18,29, and 38
`
`of the '094 Patent and claims 1, 7-9, and 16 of the '820 Patent.
`
`4)
`
`Respondents stipulate to the entry of a Consent Order in the form attached
`
`to the Stipulation to Consent Order as Exhibit A (the "Consent Order").
`
`5)
`
`The Commission has in rem jurisdiction over Respondents' certain toner
`
`supply containers and components thereof that are the basis of this Investigation
`
`5
`
`

`
`and the Commission has personal jurisdiction over Respondents for purposes of
`
`the Consent Order.
`
`6)
`
`Respondents agree that, upon entry of the Consent Order, they will not sell
`
`for importation, import into the United States, or sell or offer for sale in the United
`
`States after importation the Subject Articles, directly or indirectly, and will not
`
`aid, abet, encourage, participate in, or induce importation into the United States,
`
`the sale for importation into the United States, or the sale, offer for sale, or use in
`
`the United States after importation of the Subject Articles, except under consent or
`
`license from Canon.
`
`7)
`
`Respondents expressly waive all rights to seek judicial review or otherwise
`
`challenge or contest the validity of the Consent Order.
`
`8)
`
`Respondents will cooperate with and will not seek to impede by litigation
`
`or other means the Commission's efforts to gather information under subpart I of
`
`the Commission's Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`9)
`
`Enforcement, modification, or revocation of the Consent Order will be
`
`carried out pursuant to subpart I of the Commission's Rules of Practice and
`
`Procedure, 19 C.F.R. Part 210, which is incorporated herein by reference.
`
`10)
`
`The Consent Order shall have the .same force and effect and may be
`
`enforced, modified, or revoked in the same manner as is provided in Section 337
`
`of the Tariff Act of 1930 and the Commission's Rules of Practice and Procedure,
`
`\
`
`6
`
`

`
`19 C.P.R. Part 210, for other Commission actions, and the Commission may
`
`require periodic compliance reports pursuant to subpart I of the Commission's
`
`Rules of Practice and Procedure. 19 C.P.R. Part 210, to be submitted by
`
`Respondents.
`
`11)
`
`The Consent Order shall not apply with respect to any claim of any
`
`Asserted Patent that has expired or been found or adjudicated invalid or
`
`unenforceable by the Commission or a court or agency of competent jurisdiction,
`
`provided that such finding or judgment has become final and nonreviewable.
`
`12) Respondents will not seek to challenge the validity or enforceability of the
`
`Asserted Patents in any administrative or judicial proceeding to enforce the
`
`Consent Order.
`
`13)
`
`The signing of the Consent Order Stipulation does not constitute an
`
`admission by Respondents that an unfair act has been committed.
`
`14)
`
`There are no agreements, written or oral, express or implied, between the
`
`parties concerning the subject matter of this investigation.
`
`Also, as set forth more fully in the accompanying memorandum of points and
`
`authorities in support of this Motion, termination of this Investigation against Respondents
`
`and entry of the Proposed Consent Order is in the public interest, which favors the
`
`settlement of dispute to avoid needless litigation and to conserve resources. Specifically,
`
`entry ofthe Proposed Consent Order will conserve the time and resources of both the
`
`7
`
`

`
`Commission and the private parties since it removes Respondents from this Investigation.
`
`Furthermore, entry of the Proposed Consent Order will not impose an undue burden on
`
`the public health and welfare, competitive conditions in the United States economy,
`
`production of like or directly competitive articles in the United States or United States'
`
`consumers. There is no longer any case-in-controversy before the Commission and the
`
`Proposed Consent Order fully satisfies all of Respondents' obligations under the
`
`Commission Rules.
`
`Claimants have indicated that they do not oppose this Motion.
`
`Dated: August 4,2015
`
`Respectfully submitted,
`
`LOCKE LORD LLP
`
`sl Bryan G. Harrison
`Bryan G. Harrison
`
`Terminus 200
`3333 Piedmont Road NE,
`Suite 1200
`Atlanta, Georgia 30305
`Phone: (404) 870-4600
`Fax: (404) 806-5617
`
`Attorneys for Respondents
`General Plastic Industrial Co., Ltd
`-and Color Imaging, Inc.
`
`8
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`9
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of:
`
`CERT AlN TONER SUPPLY CONTAINERS
`AND COMPONENTS THEREOF
`
`Investigation No.
`337-TA-960
`
`[PROPOSED! CONSENT ORDER
`
`The United States International Trade Commission (hereinafter the "Commission") has
`
`instituted this Investigation under Section 337 of the Tariff Act of 1930 as amended (19 U.S.C.
`
`§ 1337), based upon the allegations contained in the Complaint filed by Complainants Canon
`
`Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively "Canon") that alleges unfair acts
`
`in the importation into the United States, the sale for importation, and the sale within the United
`
`States after importation of certain toner supply containers and components thereof by
`
`Respondents General Plastic Industrial Co., Ltd. ("GPI") and Color Imaging, Inc. ("Color
`
`Imaging") (collectively "Respondents") that infringe one or more of claims 1, 7-9, 11, 16-18,
`
`29, and 38 of U.S. Patent No. 8,909,094 ('''094 Patent") and claims 1, 7-9, and 16 of U.S. Patent
`
`No. 9,046,820 ('" 820 Patent") (collectively "Asserted Patents").
`
`Respondents have executed a Consent Order Stipulation in which they agree to the entry
`
`of this Consent Order and to all waivers and other provisions as required by the Commission's
`
`Rules of Practice and Procedure and have filed an Unopposed Motion for Termination of this
`
`Investigation based upon the Proposed Consent Order.
`
`IT IS HEREBY ORDERED THAT:
`
`1)
`
`"Subject Articles" shall mean the toner supply containers identified in the
`
`Complaint as having come from GPI and/or Color Imaging (see, for example,
`
`SectIons V and VI and Exhibits 8 to. 13 of the Complaint), and any other toner
`
`10
`
`

`
`supply containers that infringe one or more of claims 1, 7-9, 11, 16-18,29, and 38
`
`of the '094 Patent and claims 1, 7-9, and 16 of the '820 Patent.
`
`2) Upon entry of this Consent Order, Respondents shall not sell for importation, import
`
`into the United States, or sell or offer for sale in the United States after importation
`
`the Subject Articles, directly or indirectly, and will not aid, abet, encourage,
`
`participate in, or induce importation into the United States, the sale for importation
`
`into the United States, or the sale, offer for sale, or use in the United States after
`
`importation of the Subject Articles, except under consent or license from Canon.
`
`3) This Consent Order shall be applicable to and binding upon Respondents and their
`
`officers, directors, agents, servants, employees, and all persons, firms, corporations,
`
`successors, assigns, or other entities acting or purporting to act on any Respondent's
`
`behalf or under the direction or authority of any Respondent.
`
`4) Respondents shall be precluded from seekingjudidal review or otherwise
`
`challenging or contesting the validity of the Consent Order.
`
`5) Respondents shall cooperate with and will not seek to impede by litigation or other
`
`means the Commission's efforts to gather information under subpart I of the
`
`Commission's Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`6) Respondents and their officers, directors, employees, agents, and any entity or
`
`individual acting on any Respondent's behalf and with its authority shall not seek to
`
`challenge the validity or enforceability of claims 1, 7-9, 11, 16-18,29, and 38 of the
`
`'094 Patent and claims 1, 7-9, and 16 of the '820 Patent in any administrative or
`
`judicial proceeding to enforce the Consent Order.
`
`7) Upon the expiration of an Asserted Patent, this Consent Order shall become null and
`
`void as to that Asserted Patent.
`
`11
`
`

`
`8)
`
`If any claim of any Asserted Patent is found or adjudicated invalid or unenforceable
`
`by the Commission or a court or agency of competent jurisdiction, in a final
`
`decision, no longer subject to appeal, this Consent Order shall become null and void
`
`as to any such invalid or unenforceable claims.
`
`9) This Investigation is hereby terminated as to GPI and Color Imaging; provided,
`
`however, that enforcement, modification, or revocation of the Consent Order shall
`
`be carried out pursuant to Subpart I of the Commission's Rules of Practice and
`
`Procedure, 19 C.F.R. Part 210.
`
`BY ORDER OF THE COMMISSION:
`
`Date:
`
`Lisa R. Barton
`Secretary
`
`12
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of RESPONDENTS GENERAL PLASTIC
`INDUSTRIAL CO., LTD.'S AND COLOR IMAGING, INC.'S UNOPPOSED
`MOTION TO TERMINATE INVESTIGATION BASED ON CONSENT ORDER
`STIPULATION AND PROPOSED CONSENT ORDER has been served on August 4,
`2015, as indicated, on the following:
`
`The Honorable Lisa R. Barton
`Secretary
`UNITED STATES INTERNATIONAL TRADE
`COMMISSION
`500 E. Street, SW, Rooml12
`Washington, DC 20436
`
`The Honorable David P. Shaw
`Administrative Law Judge
`U. S. INTERNATIONAL TRADE COMMISSION
`500 E Street, S.W., Room 317-0
`Washington, DC 20436
`Email: pyong.yoon@usitc.gov
`
`Edmund J. Haughey, Esq.
`FITZPATRICK CELLA HARPER & SCINTO
`Suite 400
`975 F. Street, NW
`Washington, DC 20004
`Counsel for Complainants
`
`D Via Hand-Delivery
`D Via U.S. Mail
`D Via Overnight Mail
`~ ViaEDIS
`D Via Electronic Mail
`
`~ Via Hand-Delivery (1 copy)
`D Via U.S. Mail
`D Via Overnight Mail
`D ViaEDIS
`~ Via Electronic Mail
`
`D Via Hand-Delivery
`D Via U.S. Mail
`D Via Overnight Mail
`~ Via Electronic Mail
`D Via Facsimile
`
`sf Bryan G. Harrison
`Bryan G. Harrison
`
`13
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of:
`
`CERTAIN TONER SUPPLY CONTAINERS
`AND COMPONENTS THEREOF
`
`Investigation No.
`337-TA-960
`
`RESPONDENTS GENERAL PLASTIC INDUSTRIAL
`CO., LTD.'S AND COLOR IMAGING, INC.'S
`MEMORANDUM IN SUPPORT OF THEIR
`UNOPPOSED MOTION TO TERMINATE
`INVESTIGATION BASED ON CONSENT ORDER
`STIPULATION AND PROPOSED CONSENT ORDER
`
`Respondents General Plastic Industrial Co., Ltd. ("GPI") and Color Imaging, Inc.
`
`("Color Imaging") (collectively "Respondents") files this memorandum of points and
`
`authorities in support oftheir Unopposed Motion for the Termination of this Investigation
`
`as to GPI and Color Imaging (the "Motion") and for the entry of the attached Proposed
`
`Consent Order, showing the Commission as follows.
`
`I.
`
`PRELIMINARY STATEMENT
`
`Respondents respectfully submit that the termination of this Investigation as to
`
`Respondents is'timely, appropriate, and mandated. Upon entry of the Proposed Consent
`
`Order, Respondents agree that they will not sell for importation, import into the United
`
`States, or sell or offer for sale in the United States after importation, or knowingly aid,
`
`abet, encourage, participate in, or induce importation into the United States, the sale for
`
`14
`
`

`
`importation into the United States, or the sale, offer for sale, or use in the United States
`
`after importation certain toner supply containers and components that infringe one or
`
`more of claims 1, 7-9, 11, 16-18,29, and 38 of U.S. Pat. No. 8,909,094 (the ':'094
`
`Patent") and claims 1, 7-9, and 16 of U.S. Pat. No. 9,046,820 (the "'820 Patent")
`
`(collectively "Asserted Patents") until the expiration, invalidation, and/or a finding of
`
`unenforceability of those claims of the Asserted Patents or until Respondents' products
`
`are found not to infringe or are licensed. Upon entry of the Proposed Consent Order,
`
`there is no longer a case-in-controversy to be litigated before the Commission and
`
`Respondents have consented to the full extent of the very relief Complainant seeks in this
`
`Investigation. In addition, the Proposed Consent Order lully satisfies all of Respondents'
`
`obligations under the Commission's Rules and, accordingly, Complainants do not oppose
`
`the Motion.
`
`II.
`
`POINTS AND AUTHORITIES
`
`The Proposed Consent order filed herewith comports with the ITC Rules and
`
`provides Complainants with the full extent of the very relief sought.
`
`A. All Acts that Form the Basis for the Notice of Investigation Will Cease
`With The Entry Of The Consent Order.
`
`It is well-settled that "unlawful activities" under the jurisdiction of the ITC for
`
`purposes of this Investigation consist of the following:
`
`The importation into the United States, the sale for importation, or
`the sale within the United States after importation by the owner,
`importer, or consignee, of articles that-
`
`15
`
`

`
`(i) infringe a valid and enforceable United States patent... ; or
`
`(ii) are made, produced, process, or mined under, or by means of, a process
`covered by the claims of a valid and enforceable United States patent.
`
`19 U.S.C. § 1337(a)(l)(B).
`
`Upon the entry of the Proposed Consent Order, none of the requisites of 19 U.S.C.
`
`§ 1337(a)(l)(B) will exist in this Investigation. Thus, there will no longer be any case-in-
`
`controversy to be litigated in the lTC, and termination is both appropriate and mandated.
`
`B. The Proposed Consent Order Complies with the Commission's Rules.
`
`The Proposed Consent Order fully satisfies all of Respondents obligations under
`
`the Commission's Rules.
`
`First, the Proposed Consent Order reflects the fact that, as set forth above, all acts
`
`that form the basis for this Investigation will terminate upon the entry of the Proposed
`
`Consent Order. Specifically, paragraph 6 of the stipulation to the Proposed Consent Order
`
`states that Respondents agree to stop all importation related acts "upon entry of the
`
`Proposed Consent Order."
`
`Second, the Proposed Consent Order tracks the precise scope of this Investigation
`
`as defined by the Complaint. Indeed, in paragraph 6 of the Proposed Consent Order
`
`Respondents agree to not sell for importation, import into the United States or sell or
`
`offer for sale in the United States after importation, or knowingly aid, abet, encourage,
`
`participate in, or induce importation into the United States, the sale for importation into
`
`the United States, or the sale, offer for sale, or use in the United States after importation
`
`16
`
`

`
`certain toner supply containers and components that infringe one or more of claims 1, 7-
`
`9, 11, 16-18,29, and 38 of the '094 Patent and claims 1, 7-9, and 16 of the '820 Patent
`
`until the expiration, invalidation, and/or a finding of unenforceability of those claims of
`
`the Asserted Patents or until Respondents' products are found not to infringe or are
`
`licensed. Accordingly, the Proposed Consent Order conforms precisely to the scope of
`
`this Investigation.
`
`Third, because the language of the Proposed Consent Order tracks the-Notice of
`
`Investigation precisely, it covers all of Respondents toner supply containers and
`
`components of the same that Complainants allege infringe the Asserted Patents. In other
`
`words, there is no question-and no need for any possible discovery-regarding the
`
`products covered by the Proposed Consent Order. Thus, any discovery on this issue is not
`
`relevant to the relief requested herein but is instead enforcement-related discovery which
`
`is premature and unnecessary.
`
`Fourth, paragraph 6 of the Proposed Consent Order specifically states that
`
`Respondents will not "knowingly aid, abet, encourage, participate in, or induce" any
`
`importation into the U.S. of the devices that form the basis for this Investigation.
`
`Although a great many consent orders reviewed by Respondents' counsel do not contain
`
`this language, Respondents have included this phrase specifically to allay any concerns
`
`regarding either the potential importation by unrelated third parties as a way to subvert
`
`17
`
`

`
`the Proposed Consent Order or the potential use for training, demonstrations, or testing of
`
`previously imported products.
`
`In short, Respondents have worked painstakingly to craft a Proposed Consent
`
`Order that complies in every way with the Commission Ru~es and applicable ITC
`
`authorities and which Complainants do not oppose.
`
`C. The Motion to Terminate is Permissible and Appropriate.
`
`Commission Rule 210.21(c)(I)(ii) provides that any party to an Investigation may
`
`move to terminate the Investigation based upon a consent order at any time prior to the
`
`commencement of the hearing. See 19 C.F.R. § 210(c)(l)(ii). Furthermore, Rule
`
`210.21(c)(l)(ii) states that such a motion "may be filed by one or more Respondent, and
`
`may be filed jointly with other parties to the investigation." Id.
`
`Furthermore, the Commission's comments to the Rule emphasize its interpretation
`
`of the Rule as permitting efficient resolution of investigations by granting a respondent
`
`the ability to unilaterally terminate an investigation. See 57 Fed. Reg. 52830, 52838
`
`(1992). In its comments, the Commission stated:
`
`Finally, interim Rule 211.20 also was revised to streamline the
`consent order process by eliminating the requirement that the
`complainant and the Commission investigative attorney must
`participate in the filing of a motion to terminate an investigation on
`the basis of a consent order. The complainant and the Commission
`investigative attorney were, however, still permitted to file such a
`motion jointly with Respondent.
`
`Id.
`
`18
`
`

`
`In short, termination of this Investigation at this time based on the Proposed
`
`Consent Order is warranted. Respondents will cease all actions that create a case-in-
`
`controversy in the ITC upon the entry of the Proposed Consent Order, and the Consent
`
`Order addresses all of the necessary issues with respect to the scope of the termination.
`
`III.
`
`CONCLUSION
`
`Based upon the foregoing, Respondents respe~tfully request that the
`
`Administrative Law Judge issue an Initial Determination granting the Motion and enter
`
`the Proposed Consent Order submitted concurrently herewith.
`
`Dated: August 4,2015
`
`Respectfully submitted,
`
`LOCKE LORD LLP
`
`sf Bryan G. Harrison
`Bryan G. Harrison
`
`Terminus 200
`3333 Piedmont Road NE, .
`Suite 1200
`Atlanta, Georgia 30305
`Phone: (404) 870-4600
`Fax: (404) 806-5617
`
`Attorneys for Respondents
`General Plastic Industrial Co., Ltd.
`and Color Imaging, Inc.
`
`19
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of RESPONDENTS GENERAL PLASTIC
`INDUSTRIAL CO., LTD.'S AND COLOR IMAGING, INC.'S MEMORANDUM
`IN SUPPORT OF UNOPPOSED MOTION TO TERMINATE-INVESTIGATION
`BASED ON CONSENT ORDER STIPULATION AND PROPOSED CONSENT
`ORDER has been served on August 4, 20'15, as indicated, on the following:
`
`The Honorable Lisa R. Barton
`Secretary
`UNITED STATES INTERNATIONAL TRADE
`COMMISSION
`500 E. Street, SW, Rooml12
`Washington, DC 20436
`
`The Honorable David P. Shaw
`Administrative Law Judge
`U. S. INTERNATIONAL TRADE COMMISSION
`500 E Street, S.W., Room 317-0
`Washington, DC 20436
`Email: pyong.yoon@usitc.gov
`
`Edmund J. Haughey, Esq.
`FITZPATRICK CELLA HARPER & SCINTO
`Suite 400
`975 F. Street, NW
`Washington, DC 20004
`Counsel for Complainants
`
`o Via Hand-Delivery
`o Via U.S. Mail
`o Via Overnight Mail
`[g] Via EDIS
`o Via Electronic Mail
`
`[g] Via Hand-Delivery (1 copy)
`o Via U.S. Mail
`o Via Overnight Mail
`o ViaEDIS
`[g] Via Electronic Mail
`
`o Via Hand-Delivery
`o Via U.S. Mail
`o Via Overnight Mail
`[g] Via Electronic Mail
`o Via Facsimile
`
`sf Bryan G. Harrison
`Bryan G. Harrison
`
`20
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of:
`
`CERTAIN TONER SUPPLY CONTAINERS
`AND COMPONENTS THEREOF
`
`Investigation No.
`337-TA-960
`
`CONSENT ORDER STIPULATION
`
`\
`
`WHEREAS, Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc.
`
`(collectively "Canon") filed a complaint ("Complaint") before the United States International
`
`Trade Commission ("Commission") on June 12,2015, alleging unfair acts in the importation into
`
`the United States, sale for importation into the United States, and sale in the United States after
`
`importation of certain toner supply containers and components thereof by Respondents General
`
`Plastic Industrial Co., Ltd. ("GPI") and Color Imaging, Inc. ("Color Imaging") (collectively
`
`"Respondents") that infringe one or more of claims 1, 7-9, 11, 16-18,29, and 38 of U.S. Pat. No.
`
`8,909,094 (the "'094 Patent") and claims 1, 7-9, and 16 of U.S. Pat. No. 9,046,820 (the "'820
`
`Patent") (collectively "Asserted Patents");
`
`WHEREAS, the Commission instituted this Investigation under Section 337 of the Tariff
`
`Act of 1930, as amended, 19 U.S.C. § 1337, based upon the allegations contained within the
`
`Complaint;
`
`WHEREAS, Respondents GPI and Color Imaging agree to the entry of a Consent Order
`
`by the Commission, in the form attached hereto as Exhibit A;
`
`21
`
`

`
`NOW THEREFORE, pursuant to Commission Rule 210.21(c), GPI and Color Imaging
`
`stipulate and agree as follows in connection with the Unopposed Motion for the Termination of
`
`this Investigation as to GPI and Color Imaging and for the Entry of the Proposed Consent Order:
`
`1) Respondent GPI is a limited liability company organized and existing under the laws
`
`of Taiwan, with its principal place of business located at 50 Tzu Chiang Road, Wu(cid:173)
`
`Chi Town, Taichung County, Taiwan.
`
`2) Respondent Color Imaging is a corporation organized and existing under the laws of
`
`the State of Georgia, with its principal place of business located at 4350 Peachtree
`
`Industrial Blvd., Suite 100, Norcross, Georgia 30071.
`
`3)
`
`"Subject Articles" shall mean the toner supply containers identified in the Complaint
`
`as having come from GPI and/or Color Imaging (see, for example, Sections V and
`
`VI and Exhibits 8 to 13 of the Complaint), and any other toner supply containers that
`
`infringe one or more of claims 1, 7-9, 11, 16-18,29, and 38 ofthe '094 Patent and
`
`claims 1, 7-9, and 16 ofthe '820 Patent.
`
`4) Respondents stipulate to the entry of a Consent Order in the form attached hereto as
`
`Exhibit A (the "Consent Order").
`
`5) The Commission has in rem jurisdiction over Respondents' certain toner supply
`
`. containers and components thereof that are the basis of this Investigation and the
`
`Commission has personal jurisdiction over Respondents for purposes of the Consent
`
`Order.
`
`6) Respondents agree that, upon entry ofthe Consent Order, they will not sell for
`
`importation, import into the United States, or sell or offer for sale in the United
`
`States after importation the Subject Articles, directly or indirectly, and will not aid,
`
`2
`
`22
`
`

`
`abet, encourage, participate in, or induce importation into the United States, the sale
`
`for importation into the United States, or the sale, offer for sale, or use in the United
`
`States after importation of the Subject Articles, except under consent or license from
`
`Canon.
`
`7) Respondents expressly waive all rights to seek judicial review or otherwise
`
`challenge or contest the validity ofthe Consent Order.
`
`8) Respondents will cooperate with and will not seek to impede by litigation or other
`
`means the Commission's efforts to gather information under subpart I of the
`
`Commission's Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`9) Enforcement, modification, or revocation of the Consent Order will be carried out
`
`pursuant to subpart I of the Commission's Rules of Practice and Procedure,
`
`19 C.F .R. Part 210, which is incorporated herein by reference.
`
`10) The Consent Order shall have the same force and effect and may be enforced,
`
`modified, or revoked in the same manner as is provided in Section 337 ofthe Tariff
`
`Act of 1930 and the Commission's Rules of Practice and Procedure, 19 C.F.R. Part
`
`210, for other Commission actions, and the Commission may require periodic
`
`compliance reports pursuant to subpart I of the Commission's Rules of Practice and
`
`Procedure. 19 C.F ,R. Part 210, to be submitted by Respondents.
`
`11) The Consent Order shall not apply with respect to any claim of any Asserted Patent
`
`that has expired or been found or adjudicated invalid or unenforceable by the
`
`Commission or a court or agency of competent jurisdiction, provided that such
`
`finding or judgment has become final and nonreviewable.
`
`3
`
`23
`
`

`
`12) Respondents will not seek to challenge the validity or enforceability of the Asserted
`
`Patents in any aclminlstni'tive orjudicial proceeding to enforce the Consent Order.
`
`13) The sIgning of the Consent Order Stipulation does not constitute an admission by
`
`Respondents that an unfair act has been committed.
`
`14) There are noagreements, written ororal. express or implied, between the parties
`
`concerning the subject matter of this investigation.
`
`fN WITNESS WHEREOF, dllty authorized representatives ofGPI and Color Imaging
`
`have caused this Consent Order Stipulation to be executed as of the date indicated below.
`
`This _ day of July, 20IS.
`
`Respectfully submitted,
`
`General.!lastic ID.dustriai~o/Ltd.
`·.~t~-d '/VII#}
`;f;?yuI -elf, '/4J ~
`Its: PY~S,lder(:J;-
`I
`Color Imaging, Inc.
`
`By: ______ ~'____
`
`Its: -"-~ __ ____,__,____,_---
`
`4
`
`24
`
`

`
`12) Respondents will not seek to challenge the validity or enforceability of the Asserted
`
`Patents in any administrative or judicial proceeding to enforce the Consent Order.
`
`13) The signing of the Consent Order Stipulation does not constitute an admission by
`
`Respondents that an unfair act has been committed.
`
`14) There are no agreements, written or oral, express or implied, between the parties
`
`concerning the subject matter of this investigation.
`
`IN WITNESS WHEREOF, duly authorized representatives ofGPI and Color Imaginu,
`
`have caused