On January 26, Canon Inc. revealed it has used a newer U.S. patent to remove allegedly infringing third-party toner cartridges from Amazon.com in the United States. What makes this announcement particularly interesting is that two of the three brands of the cartridges taken down are owned by Ninestar, and the third appears to be manufactured by Topjet, a company that is 51 percent owned by Ninestar.
In years gone by, Canon issued press releases about Amazon takedowns weekly. That stopped in July 2021 (see “Canon Announces Settlement in Europe and More U.S. Amazon Removals, Will Report Takedowns Quarterly”). Canon still issues quarterly reports summarizing its Amazon takedown activity. The latest set of reports, for Q3 2022, was issued on October 17,2022 (see “Canon Increases Toner Cartridge Removals in Q3 2022”). Starting last year, Canon once again began issuing a few selected announcements about the takedowns of certain sellers’ Amazon Standard Identification Numbers (ASINs), but these press releases only appeared to come when the printer maker was asserting a new toner cartridge patent. For example, in January and February 2022, Canon reported on Amazon takedowns in Germany using two European patents we hadn’t seen the firm assert previously (see “Canon Uses New Patent to Remove Infringing Toner Cartridges from Amazon Germany” and “Canon Uses Yet Another New Patent for Amazon Takedown in Germany”). In September 2022, Canon announced some removals from Amazon in the United based on the infringement of a new U.S. patent (see “Canon Wields New Gear Patent for Toner Cartridge Takedowns on Amazon.com”). That trend continued with Canon’s press release on January 26, 2023.
Canon’s Announcement
Canon’s announcement says that it filed infringement reports with Amazon.com seeking the removal of certain third-party toner cartridges from that marketplace. Whereas formerly—across hundreds of press releases—Canon would only list the seller of the ASIN removed, starting with the September 2022 press release noted above, Canon began listing the brand as well. The brand is valuable information that can point to the manufacturer.
In this particular press release, Canon says that after it filed infringement reports, Amazon.com removed three ASINs (presumably multipacks) that were designed to replace the HP CF500-series toner cartridges used in the HP Color LaserJet Pro M254dw, M280nw, and M281fdw/fdn from 2017 (see “HP Rolls Out New JetIntelligence Toner Cartridges in New Color LaserJet Pro Models”). The part numbers for the cartridges sold in North America for this family of A4 color laser printers and MFPs include the HP 202A (CF500A, CF501A, CF502A, CF503A) standard-yield toner cartridges, which are rated at 1,400 pages for black and 1,300 pages apiece for color, and the HP 202X (CF500X, CF501X, CF502X, CF503X) high-yield toner cartridges, which deliver 3,200 pages for the black SKU and 2,500 pages for each color cartridge. Canon indicates the cartridges removed were designed to replace the HP 202A series.
The three ASINs removed were as follows:
- ASIN B07TJQYHW4: This listing was sold by IMAGE SHOP and featured the Lemero brand;
- ASIN B089YSD37R: This listing was sold by lestic us and featured the Valuetoner brand; and
- ASIN B083P9HFD6: This listing was sold by SUPER IMAGE OFFICE and featured the myCartridge brand.
According to Amazon’s seller listing, IMAGE SHOP is a seller account operated by Lemero of 12523 Limonite Ave., Mira Loma, CA. Lemero was incorporated by Weiming Dai or William Dai, who is CEO of Ninestar Technology Company, Ltd. There are a number of trademarks on the name Lemero, all of which are owned by Zhuhai Seine Technology Co., Ltd., of Zhuhai, China, which is Ninestar’s controlling shareholder.
Amazon’s seller listing for SUPER IMAGE OFFICE says that the business behind this seller account is SUPERPAGE Inc. of 12523 Limonite Ave., Eastvale, CA. (Some parts of Mira Loma became part of Eastvale in 2010.) This company, too, was incorporated by Weiming Dai. As is the case with Lemero, there are multiple variations of the myCartridge trademark, all of which are owned by iCartridge Corp. of 12523 Limonite Ave., Mira Loma, CA, which is another business incorporated by Weiming Dai.
If all that didn’t make it indisputable that these are Ninestar brands, there’s more: Ninestar has been listing Lemero US and iCartridge Corp. as subsidiaries in its annual reports for a couple of years now. Click here to see the firm’s Chinese-language FY 2022 annual report showing Lemero and iCartridge Corp among Ninestar’s many subsidiaries.
As for the Valuetoner-brand toner cartridge sold by lestic us, Amazon’s seller listing for lestic us says the company operating this seller account is “zhu hai le si di ke ji you xian gong si” of Pindong 4th Road, Nanping Science and Technology Industrial Park, in Zhuhai, China. Topjet’s website says that the toner cartridge manufacturer is located in this same technology park. As for the Valuetoner brand, there are three trademarks on this brand, all of them owned by FTrade Inc. of Brooklyn, NY. A number of years ago, Epson filed a patent-infringement lawsuit against FTrade, GPC Trading Co., and Wei Feng Li, saying that these entities controlled a number of brands, including Valuetoner, some of which were manufactured by Topjet (see “Epson Amends Lawsuit against E-Z Ink, Files New Lawsuit against FTrade and GPC Trading”). Thus, we think it seems safe to say that it is likely but not certain that Valuetoner cartridges, including the cartridge in question removed from Amazon, were made by Topjet. Things aren’t quite as cut-and-dried as with the Lemero and myCartridge brands, for which there is plentiful evidence that the brands are manufactured by Ninestar.
Topjet, of course, has ties to Ninestar. Ninestar Corporation acquired a 51 percent stake in Topjet in 2017 (see “Ninestar Corporation Announces Its First-Half 2017 Financial Results”). In 2020, Ninestar said it wanted to acquire the rest of the company (see “Ninestar Acquires Remaining Shares in Three Chinese Consumables Manufacturers, Discusses Coronavirus Impact”); however, Topjet decided to retain its existing equity structure (see “Ninestar Runs into Hurdle with Topjet Acquisition”).
Put altogether, it would appear that Canon’s latest Amazon takedowns are targeted at certain HP 202A (CF500A) series compatibles made by Ninestar and a company in which Ninestar holds a majority stake.
Canon’s infringement reports filed with Amazon claimed that these particular third-party toner cartridges infringed Canon’s U.S. patent number 11,156,954, “Image forming apparatus including a movable engageable member and process cartridge including a force receiving portion,” which was issued on October 26, 2021. The abstract summarizes this patent as follows:
An image forming apparatus includes a mounting portion for mounting a process cartridge, the process cartridge including a first unit having an image bearing drum, and a second unit having a developing roller, the second unit being movable between a contact position in which the roller contacts the drum and a spaced position in which they are mutually spaced; an engageable member engageable with a force receiving portion provided on the second unit; wherein the engageable member is movable between a first position for maintaining the second unit in the spaced position by engaging with the force receiving portion, a second position for permitting movement of the second unit from the spaced position to the contact position; and a third position for permitting the process cartridge to be mounted, by being pressed by the process cartridge to retract, when the process cartridge is mounted to the mounting portion.
Like so many of the toner cartridge patents Canon’s asserts, the patent focuses on couplings employed in toner cartridges. Claim 1 refers to “a coupling operatively connected to the developing roller, the coupling being rotatable about a rotational axis thereof.”
Canon’s announcement by stating, “Throughout the development, sales, and marketing process, Canon respects the intellectual property of other companies and individuals and expects others to similarly respect Canon’s intellectual property rights.”
Familiar Targets
Canon has filed a number of patent-infringement lawsuits against Ninestar over the years. Most recently, in 2021, Canon lodged a Section 337 complaint with the U.S. International Trade Commission (ITC) and filed patent-infringement lawsuits in U.S. district courts, complaining that a number of third-party supplies firms, including Ninestar, had infringed Canon’s patents on the toner containers used in certain imageRUNNER MFPs (see “Canon Files Complaint with ITC, Claims 26 Respondents Have Infringed imageRUNNER Toner Container Patents”). Ninestar defaulted in the ITC investigation (see Ninestar, Static Control, Easy Group, LD Products, and The Supplies Guys Default in Canon Toner Bottle Investigation”). The ITC awarded Canon a pair of general exclusion orders (GEOs) on these patents this past summer (see “ITC Awards Canon GEO on Toner Container Patents” and “ITC Awards Canon Its Second GEO on Toner Supply Containers”). The district court complaint against Ninestar remains ongoing.
Canon also has tangled with FTrade previously. Both Ninestar and FTrade were among the 49 respondents named in Canon’s 2018 Section 337 toner cartridge investigation before the ITC (see “Canon Causes Another Cataclysm: OEM Sues Numerous Aftermarket Firms for Patent Infringement”). FTrade defaulted in the ITC investigation and agreed to a consent order and permanent injunction to end the district court dispute (see “FTrade Defaults in Canon ITC Investigation, Agrees to Injunction in District Court”). In contrast, Ninestar fought back and led a successful defense for a group of firms named as respondents. In this Section 337 investigation, certain manufacturers’ products—including Ninestar’s—were found not to infringe Canon’s patents (see “ITC Affirms Aftermarket Win in Canon Toner Cartridge Investigation”). The ITC’s decision was upheld upon appeal (see “Federal Circuit Upholds Aftermarket’s ITC Win against Canon”).
We look forward to following if Canon’s latest patent-assertion campaign ultimately ends up in the courts or if Canon is content to rely only on Amazon takedowns to protect its 11,156,954 patent.
