In the be-careful-what-you ask-for category, put “Hey Canon, Why No ITC Complaint.” Just this March, I was wondering (aloud unfortunately) why Canon hadn’t filed a patent-infringement complaint before the U.S. International Trade Commission to accompany the 11 lawsuits it filed in January in the U.S. District Court for the Southern District of New York (see “Here We Go Again: Canon Sues Firms for Infringing Various Gear and Drum Patents”).
Actionable Intelligence President Charles Brewer urged patience, saying it was only a matter of time before Canon sought an ITC investigation. But I saw the lack of an ITC complaint as a sign that Canon found the general exclusion order it was awarded last year less than satisfactory given the number of non-infringing products that soon made their way to market. Well, score one for Mr. Brewer. On May 7, Canon asked the ITC to initiate an ITC investigation. You can read our complete coverage here: Canon Requests New ITC Investigation over Coupling Used in Third-Party Toner Cartridges.
Thus, earlier today I learned that I am impatient, that my boss is right, and that I probably owe Charlie a beer—all hard, grim lessons. But more importantly, the ITC complaint provides some insight into why Canon, which formerly in 2010 and 2012 filed its district court complaints and ITC complaint simultaneously, did not do so this time around. Namely, Canon wanted to include some patents it was issued this spring, and the OEM was busy gathering additional evidence of infringement—the ITC complaint names as respondents 15 additional firms not named in the January district court complaints. The OEM says it has since filed district court complaints against these additional parties as well.
Given the news that just broke, you might think I would regret titling my piece “Hey Canon, Why No ITC Complaint?” but I am unrepentant. I do love a provocative title, and at the time it was a valid question—one that (unfortunately for the aftermarket supplies industry) Canon has just answered.