The long-running legal dispute between the Japanese-based OEM and the cartridge remanufacturer has finally been brought to a conclusion.
Court papers seen by The Recycler reveal that Epson Portland Inc., Epson America, Inc., and Seiko Epson Corporation (collectively “Epson”) and Respondents Ninestar Image Tech Ltd., Ninestar Technology Company, Ltd. and Apex Microtech Ltd. (collectively “Ninestar”) jointly moved to terminate “the Request of Ninestar Image, Ninestar U.S. and Apex Microtech for An Advisory Opinion That Requesters’ Remanufactured Ink Cartridges Are Outside The Scope Of The General Exclusion And Cease And Desist Orders, filed on 26 April 2017 (“Ninestar’s Request”).”
Under the 337-TA-565 and 337-TA-946 investigations, Epson was awarded a GEO and CDOs by the USITC against Ninestar in May 2016. The investigations concern Epson’s ‘917, ‘902, ‘422, ‘053, ‘397, ‘233, ‘116, ‘749, ‘163 and ‘513 US patents.
The jointly filed termination request, based upon a settlement agreement between Epson and Ninestar, to the United States International Trade in Washington, D.C. to the Honourable David P. Shaw, Administrative Law Judge, Epson and Ninestar state: “Epson and Ninestar mutually desire to settle and compromise the disputes between them relating to the AO Proceeding”.
The motion papers stated: “Accordingly, Epson and Ninestar respectfully request that the Administrative Law Judge issue an initial determination granting their joint motion and terminating Ninestar’s Request on the basis of the Settlement Agreement.”
The settlement papers seen by The Recycler were redacted (confidential), but the part which has been made available for public viewing, states that “Epson is not granting a license to Ninestar […] under any of Epson’s patents” and that “Ninestar, through its counsel, will withdraw its Advisory Action Request […] and dismiss the AO Proceeding”.