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HP Reveals the Breadth of the ITC’s General Exclusion

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Post HP Reveals the Breadth of the ITC’s General Exclusion
Posted: Sat Jul 02, 2011 12:38 PM
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HP Reveals the Breadth of the ITC’s General Exclusion Order for Ink Tanks

HP spoke with us about the ink tank general exclusion order it was recently granted
This year, the U.S. International Trade Commission (ITC) granted HP a general exclusion order (GEO), barring the import of non-OEM ink tanks that violate certain HP patents. We recently had the opportunity to discuss the GEO, the products it covers (and those it doesn’t), and enforcement of the GEO with Andy Binder, director of marketing and brand protection for HP Inkjet and Web Solutions (IWS), and Matthew Barkley, program manager for brand protection activities for HP IWS.

The list of excluded products is longer than many imaging industry news outlets—including Actionable Intelligence—have reported. Another key takeaway is that HP wants to be, as Mr. Binder puts it, “transparent and clear” with its aftermarket competitors. While the firm is taking a hardline stance against those infringing its patents by marketing compatible ink tanks or new-build remans (compatibles marketed as remanufactured), the company believes in “free and open” competition, such as that provided by legitimate remanufacturers that avoid infringing HP’s intellectual property (IP). Still, Mr. Binder says HP’s recent spate of legal actions should send a clear message. “We make an enormous investment in IP and believe it is this investment that drives innovations and differentiates us from the competition,” he says, adding, “We are protecting that investment.”

Recap of ITC Investigations

HP has turned to the ITC for protection of its ink tank business
HP was granted a GEO in investigation number 337-TA-691, “Certain Inkjet Ink Supplies and Components Thereof” (see “ITC Grants HP General Exclusion Order in HP 02 Patent-Infringement Suit”). The exclusion order is for claims 6 and 9 of U.S. patent number 6,089,687 (the ‘687 patent), “Method and apparatus for specifying ink volume in an ink container,” and claims 1, 5, and 6 of U.S. patent 6,264,301 (the ‘301 patent), “Method and apparatus for identifying parameters in a replaceable printing component.” Originally, the complaint that sparked this investigation focused on two additional patents: U.S. patents 6,959,985 (the ‘985 patent) and 7,104,630 (the ‘630 patent). HP ultimately decided to dismiss the investigation related to the latter two patents in investigation 337-TA-691 and then filed a new patent-infringement complaint with the ITC related to these patents. This newer investigation, number 337-TA-730, is also titled “Certain Inkjet Ink Supplies and Components Thereof.” The two ITC complaints name many of the same respondents (see table below).

We recently covered some recent developments in the active investigation, 337-TA-730, and discussed how this investigation was an offshoot of investigation 337-TA-691 (see “HP Requests Another General Exclusion Order Related to HP 02 Ink Tanks”). Thus, we were eager to learn more about why HP decided to split the investigations. Unfortunately, Mr. Binder and Mr. Barkley declined to comment on pending litigation. So the firm’s motivations remain a mystery for now.

What Ink Tanks Are Excluded
When news of the GEO granted in investigation 337-TA-691 first broke, much of the coverage, including our own, focused on the HP 02 tanks, primarily because this was the inkjet cartridge series named numerous times in the original complaint. Mr. Barkley, however, explains that the GEO applies to other SKUs as well. He says, “The GEO in the case extends to cover new-build HP 02 series and HP 10 series products, including the HP 10, 11, 12, 13, 28 and 88 ink cartridges.”

All these ink tanks are used in inkjet devices using permanent print heads and an off-axis ink delivery system to bring ink from the individual tanks to the print head. The HP 02 ink tanks were introduced back in 2005 and have been used in various Photosmart devices (see HP website for compatible printers). The HP 10 black, cyan, magenta, and yellow ink tank were introduced in the first HP desktop inkjet to feature a nonintegrated inkjet cartridge design, the HP Color Printer 2000C, which was introduced way back in 1998. The HP 11, 12, 13, and 88 tanks were used in succeeding generations of Business Inkjet and Officejet office-oriented inkjet devices up until 2009, when HP introduced its newer HP 940 tanks in the Officejet Pro 8000 and 8500 series and the HP 920 tanks in the Officejet 6500 series.

Thus, the ITC handed HP an exclusion order protecting the U.S. market for ink tanks used in more than a decade worth’s of office-oriented inkjets—an enormous installed base of products, far more than if the exclusion order had applied just to the HP 02 tanks.

Mr. Binder and Mr. Barkley say that HP decided to file both complaints, 337-TA-691 and 337-TA-730, with the ITC because in 2008 and 2009, the OEM investigated the market for infringing products after noticing “lots of companies moving into the new compatible ink tank business in the U.S.”

This, of course, is really nothing new. Ink tanks are typically much easier to clone than integrated inkjet cartridges, and compatible makers have been quick to market with ink tanks for various Brother, Canon, Epson, HP, and (more recently) Lexmark ink tank models. Before Epson launched a series of lawsuits culminating in a GEO in 2007, it lost an enormous share of the market for certain ink tanks—some say up to 50 percent—to compatible makers. The general exclusion order has helped it win back almost all this share in the United States. Mr. Binder and Mr. Barkley indicate that HP saw the cloned ink tank situation growing worse in the United States and chose to take action against compatible makers violating its IP. HP, too, undoubtedly stands to win back substantial share from compatible makers.

GEO Covers Compatibles, Not Remans
Mr. Binder says that HP has requested U.S. Customs and Border Protection (CBP) enforce the GEO on new-build or compatible ink tanks. HP has not requested enforcement against remanufactured ink tanks. Mr. Binder points out, however, that CBP will be paying close attention to shipments of remanufactured SKUs due to the prevalence of so-called new-build remans. He warns, “Customs is tuned for that kind of approach.”

The issue of new-build remans is a hot topic—and a sore one not only for OEMs but legitimate remanufacturers (for more on new-build remans, see “Two Categories of Aftermarket Toner Cartridges Gaining Traction”). Makers of new plastic falsely marketing their products as remanufactured are able to offer low prices that remanufacturers cannot hope to match because of the high cost of empty cartridges, all the while capitalizing on the “green” and “reuse” messaging that many remanufacturers make a key point of differentiation.

Mr. Barkley points out that there is a role to play for the reman community in helping to identify infringing products that hurt both HP’s business and that of legitimate remanufacturers. He suggests that interested parties directly contact U.S. CBP personnel. The contact number for CBP’s Intellectual Property Rights (IPR) branch contact is (SEE THIS). He notes that this reporting process should be used for qualified information—that is, reliable information with actionable details such as seller and source of the product. Mr. Barkley adds that CBP does not take action for product for sale in the channel, only at the point of import, so information provided should focus on driving the identification and filtering of imports.

Tags: HP, ITC investigations, new-build remans, non-OEM cartridges

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