Hewlett-Packard Company v. Microjet Technology Co., Ltd. et al.

I'll research this case thoroughly using web search.

Let me gather details on the patents and the Commission's opinion.

Let me get the titles/technical subject matter of each patent and the district court parallel litigation.

Case Overview and Background — Certain Ink Jet Print Cartridges and Components Thereof, Inv. No. 337-TA-446

The parties. This was a classic operating-company Section 337 action, not an NPE/PAE or university assertion. The complainant, Hewlett-Packard Company (Palo Alto, CA), was at the time the dominant U.S. manufacturer and seller of thermal ink-jet printers and the proprietary "HP pen" cartridges that go with them; HP's U.S. ink-jet business supplied the domestic-industry showing (the Commission's institution notice and the final opinion confirm HP as complainant and the target of the industry requirement). The respondents were a Taiwanese manufacturer, Microjet Technology Co., Ltd. (identified in the 2001 institution materials as of Taipei; later filings list Hsinchu City, Taiwan), and four U.S. resellers/distributors of Microjet cartridges — Printer Essentials.com, Inc. (Reno, NV), Price-Less Inkjet Cartridge Company (Port Charlotte, FL), Cartridge Hut and Paperwork Plus (Sun City, CA), and ABCCo.net, Inc. (Port Charlotte, FL). The presence of purely domestic seller respondents is itself notable: it illustrates that Section 337 reaches U.S. parties that sell imported infringing articles after importation, not just foreign manufacturers. HP's lead outside counsel is reported by California Lawyer/WSGR as John Allcock of Gray Cary Ware & Freidenrich (San Diego) — a secondary-source attribution I could not corroborate against a docket entry. (USITC Pub. 3549; 66 Fed. Reg. 7783-84 (Jan. 25, 2001))

Accused products and patents. The accused articles were Microjet-manufactured aftermarket/replacement thermal ink-jet print cartridges (and their components) designed to fit HP ink-jet printers — the earliest wave of the "compatible"/remanufactured-cartridge trade that became a durable feature of the ink-jet market. The Commission instituted on six HP patents: U.S. Patent Nos. 4,827,294, 4,635,073, 4,680,859, 4,872,027, 4,992,802, and 5,409,134, covering thermal ink-jet printhead and cartridge/reservoir structure. I verified the technical subject matter of only one of these in the sources retrieved: the '073 patent describes a thermal ink-jet printhead structure in which a thin-film resistor substrate (tantalum-aluminum heater resistors, conductive traces, bus bars) is connected to a TAB-bond flexible circuit via beam leads joined by controlled thermosonic bonding, with an elastomer ring providing pressure contact to the carriage's drive electronics — an architecture at the core of HP's disposable "pen" design. (US 4,635,073) For the remaining five patents I could not independently confirm individual titles/abstracts within my search budget, so I will not supply one-line sketches for them beyond noting they belong to HP's 1980s thermal ink-jet cartridge/printhead family (the '859 patent also appears in HP's earlier HP v. NuKote International litigation filed Sept. 19, 1994 in N.D. Cal., per the ITC record). The asserted-claim findings were narrow per patent: claim 4 of the '073 and '027 patents, claims 1 and 3 of the '294 patent, claims 2-3 of the '859 patent, claims 1-4 and 12 of the '802 patent, and claims 8-9 and 18-20 of the '134 patent.

Procedural posture and venue. HP filed the Section 337 complaint in December 2000; the Commission instituted on January 19, 2001, with Chief ALJ Paul J. Luckern designating the presiding ALJ. The original target date was March 25, 2002 (Order No. 3), extended to April 25, 2002 (Order No. 18). The case was streamlined by consent-order terminations as to Printer Essentials and Cartridge Hut, a partial summary determination that HP satisfied the economic prong of the domestic-industry requirement (Order No. 12), and HP's withdrawal of certain claims (Order No. 17). The hearing began August 27, 2001; the ALJ issued his final initial determination on January 25, 2002, finding a violation based on infringement of all asserted claims except claim 4 of the '073 patent (and no domestic industry as to '073). On March 7, 2002, the Commission determined to review the ALJ's construction of claim 4 of the '073 patent and his no-infringement/no-domestic-industry findings, and otherwise declined review; on review it reversed-in-part, found infringement of claim 4 and satisfaction of the technical prong, and issued a limited exclusion order against Microjet plus cease-and-desist orders against Price-Less and ABCCo.net (100% bond during Presidential review), terminating the investigation on April 25, 2002 (published at 67 Fed. Reg. 21733, May 1, 2002). (ITC notice of issuance; Pub. 3549) Venue mattered enormously: ITC Section 337 offered HP in rem exclusion relief against imports on a statutorily compressed ~12–18 month track with no monetary damages, versus a multi-year district court trial. HP also filed a parallel damages action, Hewlett-Packard Co. v. Microjet, No. CV-S-01-0060 (D. Nev., filed Jan. 17, 2001) (reported by WSGR; I could not verify this docket on PACER), reflecting the standard ITC-plus-district-court strategy. (Note: the WSGR article's "five patents" description conflicts with the authoritative six-patent institution record; prefer the ITC/Federal Register sources.)

Why it is notable. First, it is an early, high-profile example of a U.S. operating company using the ITC as its primary anti-import tool in the aftermarket consumables space — HP's ink-jet "razor-and-blade" model depended on cartridge sales, and an exclusion order against a low-cost Taiwanese cartridge maker was worth more than damages. Second, it is legally significant for the Commission's de novo-style reversal of the ALJ on claim construction — the Commission took up claim 4 of the '073 patent, re-construed it, and flipped the infringement and domestic-industry findings, a useful illustration of the Commission's plenary review power and a forerunner of the claim-construction-centric patent appeals that dominated the following decade. Third, it sits at the head of a long line of HP ink-jet ITC investigations targeting Asian cartridge/printhead suppliers — e.g., Inv. Nos. 337-TA-565 (2006), 337-TA-691, 337-TA-723 (2011, general exclusion order against APM/MicroJet/PTC/Mipo), and 337-TA-946 (2015-16, Epson) — with Microjet recurring as a respondent, underscoring how the compatible-cartridge import trade became a persistent front in ITC practice. Finally, it connects to the parallel refill/reconstruction line of authority, including the Federal Circuit's HP v. Repeat-O-Type Stencil Mfg. (123 F.3d 1445 (Fed. Cir. 1997)) and the earlier HP v. NuKote case involving the '859 patent, which together framed the permissible-repair boundaries around the very cartridge technology at issue here.

Sourcing note: party names, institution date, patent list, interim orders, target dates, the January 25, 2002 ALJ ID, the March 7, 2002 review determination, the reverse-in-part and the April 25, 2002 exclusion/CDO orders and termination are grounded in the ITC's notice of investigation (66 Fed. Reg. 7783-84), the Commission's notice of issuance (67 Fed. Reg. 21733 / 02-10775) and USITC Pub. 3549. The D. Nev. parallel action and outside counsel are from a secondary trade-press source and should be independently confirmed; individual titles and abstracts for the '294, '859, '027, '802, and '134 patents were not verified and are therefore not asserted.

I'll research this ITC investigation and its related proceedings.

Let me fetch the full ITC final determination publication and search for appeals and the parallel district court case.

Let me get the full termination notice and search for any appeal.

Preliminary framing

This is not a district-court patent case, and several of the milestones you asked about have no analogue here. Inv. No. 337‑TA‑446 was a Section 337 import investigation. That means:

• No jury, no damages, no JMOL/new trial/fee motions. The remedy is prospective — exclusion orders and cease-and-desist orders. HP could not recover money at the ITC; it had to (and did) file a parallel district-court action for damages.
• "Markman" does happen, but in ITC form. The ALJ construes claims (a Markman-type analysis, in this era governed by Markman/Vitronics rather than Phillips, which post-dates the case), and the Commission reviews claim construction de novo — which is exactly what drove the outcome here.
• No IPR/PGR. The America Invents Act inter partes review did not exist until 2012‑09‑16, a decade after this investigation closed. All six asserted patents issued between 1984 and 1995, so none was ever eligible for an IPR/PGR. The only PTAB-adjacent "parallel proceeding" concept is irrelevant here. (The later ITC cases involving the same respondent, discussed below, similarly predate or barely overlap the AIA regime.)
• The authoritative public record is USITC Pub. No. 3549, Certain Ink Jet Print Cartridges and Components Thereof, Inv. No. 337‑TA‑446 (April 2002) (containing the Commission opinion, the limited exclusion order, and the ALJ's ID excerpts): https://www.usitc.gov/intellectual_property/documents/pub3549.pdf

---

Chronology of key developments

1. Filing and institution

Answers / counterclaims. The institution notice required respondents to respond under 19 C.F.R. § 210.13 within 20 days of service, warning that failure to respond "may be deemed to constitute a waiver" and authorize findings by default. I could not retrieve the individual responses. Note the structural point: under 19 U.S.C. § 1337(c) the Commission does not adjudicate counterclaims — a respondent asserting one must refile it in district court. Microjet's invalidity (double patenting) and unenforceability/inequitable-conduct theories were litigated as affirmative defenses, not counterclaims, and were resolved against it (see § 5 below).

2. Early dispositive and case-management orders

The two consent-order terminations (Printer Essentials, Cartridge Hut) are the ITC's standard mechanism for resolving against resellers, and they discharged two of the five named respondents before hearing.

3. Discovery milestones of strategic significance

The public record is thin on day-to-day discovery (ITC dockets of this vintage are not fully in EDIS). What is documented and strategically meaningful:

• Product discovery on the accused cartridges was the heart of the case and appears to have been essentially undisputed factually: the Commission opinion states that "[t]here is no dispute here among the parties concerning the actual devices at issue," which let the Commission collapse infringement into claim construction. Accused models included Microjet's HC‑01, HC‑02, HC‑03, HC‑04, HC‑C01, HC‑C03, HC‑S01, HC‑S03; several models were stipulated as infringing.
• Protective-order/confidentiality practice was heavy — Pub. 3549 and the record exhibits are pervasively redacted ({ }), as is typical in ITC cartridge cases involving pricing and manufacturing data.
• The complaint amendment (Order No. 9) was a discovery-driven pleading event: HP voluntarily surfaced the 1994 Nu‑Kote litigation involving the '859 patent rather than have it come out through respondent discovery.
• Non-participation of Price‑Less and ABCCo.net: the ALJ expressly found that "Price‑Less and ABC have failed to appear at the hearing and did not file any prehearing or post[-]hearing submissions." Price‑Less had ordered Microjet cartridges and admitted retaining inventory — the evidentiary basis for the cease-and-desist orders against Price‑Less and its affiliate ABCCo.net.

4. Claim construction (Markman-type) — the dispositive issue

The ALJ and the Commission applied the then-controlling intrinsic-evidence hierarchy: look first to the claims, specification, and prosecution history; resort to extrinsic evidence only where the public record is ambiguous (Markman; Vitronics; the Commission opinion also cites Rheox, Inc. v. Entact, Inc., 61 U.S.P.Q.2d 1368 (Fed. Cir. 2000) for the proposition that where the accused-product facts are undisputed and the parties only dispute claim meaning, infringement collapses into claim construction and is decided as a matter of law).

Constructions that mattered:

• "bonded" (claim 4 of the '073 patent) — outcome-determinative. The ALJ construed/credited Microjet's thermal-press bonding of beam leads to thin conductors as not meeting the claim's "bonded" requirement (the '073 specification describes a thermosonic bond created by "a controlled combination of ultrasonic energy, pressure, heat and time"), and additionally rejected HP's doctrine-of-equivalents theory because HP put in no evidence that Microjet's thermal press generated a thermosonic bond. The Commission reversed the construction, held that Microjet's thermal-press bond met the definition of "bonded," and found literal infringement of claim 4.
• "sealed" (claims of the '134 patent). Construed as "sufficiently sealed 'to maintain a back pressure relative to atmosphere.'" This defeated Microjet's argument that an ambient-air opening took the accused devices outside the claims.
• Beam-lead "accessible for electrical connection" ('294 patent). The ALJ held that contact pads on the beam leads are part of the beam leads, so exposing only the pads satisfied the "extended portion accessible on an outer surface" limitations.

Validity/unenforceability rulings in the same ID: Microjet argued the '859 patent (claims 2–3) was invalid for double patenting and non‑practiced; the ALJ rejected the double-patenting argument. The ID also contains a materiality/inequitable-conduct-style analysis (duty to disclose material information; materiality where a reasonable examiner would consider it important), which was resolved against the respondent. (These portions of Pub. 3549 are only partially retrievable; treat the specifics as lower-confidence.)

Domestic industry (technical prong). The ALJ found HP had not met the technical prong as to the '073 patent; the Commission reversed, finding that the beam leads on HP's own cartridge are "bonded," satisfying the technical prong for the '073 patent as well.

5. Hearing, final ID, and post-hearing motions

• 2001‑08‑27: evidentiary hearing commences before the presiding ALJ (hearing ran over multiple days in late August/September 2001).
• Post-hearing briefing (HP's post-hearing brief, Microjet's responsive post-hearing brief "RPost," and the Commission Investigative Attorney's brief — the ITC's independent Staff counsel participated throughout), followed by a recommended determination on remedy and bonding.
• 2002‑01‑25: ALJ issues the final Initial Determination plus recommended determination on remedy and bonding, finding a violation of Section 337:
  • infringement of the asserted claims of five of the six patents (the '294, '859, '027, '802, and '134 patents) by Microjet, Price‑Less, and ABCCo.net;
  • no infringement of the '073 patent, and failure of the technical prong as to the '073 patent;
  • domestic industry satisfied as to the other five patents;
  • recommended remedy: limited exclusion order against Microjet; cease-and-desist orders against Price‑Less and ABCCo.net; bond of 100% of entered value during Presidential review; exclusion to include entry for display at trade shows; model numbers listed.
• Early February 2002: petitions for review of the ID filed (the FR notice text is truncated at "On February 1…"; HP petitioned on the '073 issues — this is the ITC equivalent of post-trial motion practice).
• 2002‑03‑07: Commission determines to review in part, granting review on exactly three issues: (1) the ID's construction of the asserted claim of the '073 patent; (2) the ID's finding of no infringement of the '073 patent; and (3) the ID's findings on the technical prong of domestic industry as to the '073 patent. No review of the remainder — meaning all the other 337 elements (importation, infringement of the other five patents, validity, economic prong, technical prong for the other five) became final and unappealable at the Commission level. Notice issued 2002‑03‑12; published 67 Fed. Reg. 11709 (2002‑03‑15): https://www.federalregister.gov/documents/full_text/xml/2002/03/15/02-6316.xml

6. Final disposition — Commission reverses in part, orders issue, investigation terminated

• 2002‑04‑25: Commission issues its opinion and remedial orders. On de novo review it reversed the ALJ's claim construction of claim 4 of the '073 patent, found the accused devices literally infringe claim 4, and found HP satisfied the technical prong as to the '073 patent. It therefore found a violation as to all six patents.
  • Limited exclusion order against Microjet, covering claim 4 of the '027 patent; claim 4 of the '073 patent; claims 1 and 3 of the '294 patent; claims 1–4 and 12 of the '802 patent; claims 8–9 and 18–20 of the '134 patent; and claims 2–3 of the '859 patent — barring entry for consumption, entry for consumption from a foreign-trade zone, and withdrawal from a warehouse for consumption, for the remaining terms of the patents.
  • Cease-and-desist orders against Price‑Less and ABCCo.net.
  • Bond during Presidential review: 100% of entered value.
  • Public-interest factors under § 337 held not to preclude relief.
• Remedy-scope rulings worth noting (all favoring respondents in part):
  • The Commission denied HP's request to extend the orders to cartridge components, because there was no evidence any components had been imported — no violation, no remedy. (A useful illustration of the importation nexus limiting ITC remedial reach.)
  • The Commission declined to list Microjet model numbers, following the practice that specificity invites circumvention.
  • The Commission declined to include a certification provision, agreeing with HP that Microjet's cartridges are visually identifiable.
  • Trade-show-display entry was briefed; the ALJ recommended including it, and the order language retrieved covers entry for consumption and related customs entries (I could not confirm the final treatment of display-only entries from the retrieved text).
• 2002‑04‑25 also matches the metadata termination date; the notice of issuance of the orders and termination of the investigation was published 2002‑05‑01, 67 Fed. Reg. 21733: https://www.federalregister.gov/documents/2002/05/01/02-10775/in-the-matter-of-certain-ink-jet-print-cartridges-and-components-thereof-notice-of-issuance-of

7. Appeal — none identified

No Federal Circuit appeal is reflected in the sources I retrieved, and I found no reported Federal Circuit decision reviewing Inv. No. 337‑TA‑446. Under 19 U.S.C. § 1337(c), a respondent has 60 days from the final determination to appeal to the Federal Circuit; the absence of any reported decision strongly suggests Microjet did not appeal (or any appeal was resolved without a published opinion). This is a negative finding, not a verified fact — I could not confirm it against a Federal Circuit docket. Presidential review under § 1337(j) (60 days) likewise produced no reported disapproval, so the orders would have become final on or about 2002‑06‑24. Again: not independently verified.

8. Parallel and follow-on proceedings

• District court damages action (parallel). HP filed Hewlett‑Packard Co. v. Microjet Technology, CVS01‑0060 (D. Nev., filed 2001‑01‑17) — a Las Vegas damages action on the same patents, reported in a Wilson Sonsini-published article (Otteson, IP Blowout, March 2002), https://www.wsgr.com/news/PDFs/otteson0302.pdf. Caveat: I could not verify this docket entry directly (that article also states, incorrectly as a matter of law, that ITC and court proceedings "cannot run simultaneously"); one would expect the district case to have been stayed under 28 U.S.C. § 1659 during the ITC investigation. No reported disposition found.
• Prior litigation referenced in the ITC complaint. HP's 1994‑09‑19 action against Nu‑Kote International, Inc. (N.D. Cal.) on the '859 patent and others, added to the complaint by Order No. 9.
• Later HP ITC campaigns against the same respondent. The asserted patents are the front end of a long campaign: HP returned to the ITC against Microjet in Inv. No. 337‑TA‑565 (Certain Ink Cartridges and Components Thereof) and, most notably, Inv. No. 337‑TA‑723, Certain Inkjet Ink Cartridges with Printheads and Components Thereof, decided 2011‑10‑24, in which the Commission reversed the ALJ on inducement and issued a general exclusion order against Asia Pacific Microsystems (APM), with Microjet in default, PTC Holdings non-appearing, and the Mipo respondents settling. The Commission's inducement analysis there applied Global‑Tech Appliances v. SEB (2011) and DSU Medical v. JMS (Fed. Cir. 2006) (en banc in relevant part), and relied on APM's awareness of an earlier investigation (337‑TA‑711) in which Microjet was accused of infringing the same patents. See 76 Fed. Reg. (2011‑10‑28) and the Commission opinion at https://www.usitc.gov/intellectual_property/documents/pub4373.pdf. This is the practical legacy of the -446 exclusion order: Microjet's failure to comply/participate tracked into default findings and a general exclusion order a decade later.
• PTAB. None. No IPR, PGR, or CBM proceeding exists or could exist on the six asserted patents; they all expired or lapsed long before the AIA created those vehicles, and none appears in PTAB records.

---

Bottom line

Why the case matters analytically: it is a clean illustration of (1) the Commission's de novo power to reverse an ALJ on claim construction — here flipping the entire infringement and domestic-industry analysis on a single term ("bonded"); (2) the collapse of infringement into claim construction where accused-product facts are undisputed (Rheox); (3) the importation nexus capping remedial scope (no components absent evidence of importation); and (4) consent orders and default as the workhorses for terminating reseller respondents, with the cease-and-desist machinery doing the work against domestically present infringers who never showed up.

Items I could not verify and would confirm on PACER/EDIS/FR before relying on them: the identity of the presiding ALJ; the exact document numbers of the respondents' answers and any counterclaims; the precise resolution of the trade-show-display-entry issue in the final exclusion order; whether the D. Nev. action produced any reported ruling or was stayed under 28 U.S.C. § 1659; and the absence of a Federal Circuit appeal.

I'll search multiple angles for press coverage of this ITC investigation.

Let me search additional angles — the 2002 outcome, the parallel district court suit, and trade press.

Good coverage emerging. Let me dig into a few more angles and identify the WSGR-hosted article.

Press Coverage of Hewlett-Packard v. Microjet Technology (ITC Inv. No. 337-TA-446)

The filing got early, brief trade coverage. The Register reported on 2001-01-08 that HP had filed a patent-infringement complaint with the ITC over "cut-price clone inkjet cartridges," naming two accused products "intended to replace HP 51626A and HP 51629A cartridges" that allegedly "contravene six patents." Notably, The Register said "three companies are named in HP's complaint — Microjet Technology of Taiwan, Price-Less Inkjet Cartridge of Port Charlotte, Florida, and Printer Essentials.com in Reno, Nevada" — a narrower respondent list than the five respondents the Commission actually instituted against (Microjet, Printer Essentials, Price-Less, Cartridge Hut and Paperwork Plus, and ABCCo.net, per the Federal Register notice; the discrepancy may reflect a pre-institution version of the complaint, but no outlet explained it. The same filing was covered abroad by the Finnish outlet IS.fi/Digitoday, which likewise described HP seeking an order barring import and sale of the accused Microjet-replacement cartridges. Out-Law (Pinsent Masons) reported on 2001-05-21 that HP had settled with reseller Printer Essentials.com, which "agreed to immediately stop importing and selling the disputed cartridges" and "acknowledged that the Microjet cartridges infringe HP's patents and that the patents are valid," while the investigation against Microjet and the remaining resellers continued.

The January 2002 ALJ win produced the widest pickup, largely via HP's press release. WhatTheyThink carried HP's release on 2002-01-29, reporting that "HP has won a significant patent lawsuit relating to thermal inkjet printer cartridges" and that the ALJ "issued a lengthy decision detailing how the Microjet cartridges infringe five of the six HP patents," while "resoundingly reject[ing] Microjet's claims that the patents were invalid." That release quoted HP executive Vyomesh Joshi framing the result as demonstrating "the strength and depth of HP's patent portfolio." Germany's heise online reported the same ALJ outcome — that the administrative law judge found five of six patents infringed and that Microjet and the reseller respondents were barred from importing and distributing the clone cartridges. Because these accounts were published immediately after the January 25, 2002 initial determination, they characterize the case as an HP victory; they do not reflect the Commission's subsequent March 2002 decision to review and reverse-in-part on claim 4 of the '073 patent, which converted the ALJ's one-patent loss into a full finding of infringement. I found no press coverage of that April 2002 Commission reversal or of the exclusion order itself — the later stages of the case appear to have gone unreported outside the agency's own Federal Register notices.

The most analytically interesting piece goes beyond the court record. A Wilson Sonsini-hosted magazine PDF, "Inside: Intellectual Property Blowout" (dated ~March 2002), treats the HP matter as a case study in the ITC's rising popularity. It notes that HP also "filed a federal lawsuit in a Las Vegas court, seeking an undisclosed amount in monetary damages — Hewlett Packard v. Microjet, CVS01-0060 (D. Nev., filed Jan. 17, 2001)," explaining that a complainant can pursue both an ITC investigation and a district court damages action. The article quotes Gray Cary's Allcock (described as counsel for a party) arguing the ITC route was the right call because a district court case "would still be in a pretrial phase," and quotes Wilson Sonsini's James Otteson on why tech companies turn to the Commission. It also editorializes on market impact: "Although the government didn't grant Allcock's client a cash settlement, Hewlett-Packard maintained its strong dominance in the inkjet cartridge market and potentially saved millions of dollars" — an analyst-style inference, not a reported figure. No outlet reported any damages award or settlement sum for Microjet, which is consistent with the ITC being a remedy (exclusion/cease-and-desist) forum rather than a damages forum.

Bottom line on coverage volume: reporting on this investigation is thin and mostly contemporaneous wire/trade shorthand plus HP's own release. I found no coverage from Reuters, Bloomberg Law, Law360 (which did not exist in 2001–02), Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks, or JD Supra. Caveat: later ITC inkjet-cartridge stories that surface in searches — e.g., CDRInfo and a National Law Review piece on HP's "willful blindness" general exclusion order — concern HP's later investigations (Inv. Nos. 337-TA-711 and 337-TA-723, circa 2010) against many of the same parties, not this 2000–2002 case, and should not be conflated with it.

Sources

• Certain Ink Jet Print Cartridges and Components Thereof
• ON BEHALF OF MICROJET TECHNOLOGY COMPANY LIMITED:
• Dr
• 21734 Federal Register / Vol
• named as respondents: Microjet Technology Co
• FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq
• FOR FURTHER INFORMATION CONTACT: Rett Snotherly, Esq
• INSIDE: INTELLECTUAL PROPERTY BLOWOUT
• Hewlett Packard Company v. Microjet Technology Co Ltd et al
• Secretary. - U
• In the Matter of Certain Ink Jet Print Cartridges and Components Thereof; Notice of Issuance of Limited Exclusion Order and Cease and Desist Orders; Termination of the Investigation - Legal Status
• ITC Issues General Exclusion Order Based on Respondents' "Willful Blindness" and Potential to Evade Order

I'll research the counsel of record for Hewlett-Packard in this investigation. Let me start with several searches.

Excellent — I found the primary service list. Let me dig deeper for additional counsel and corroboration.

Let me look for the full service lists (earlier filings may list more attorneys) and the ITC EDIS docket.

Counsel of Record for the Complainant (Hewlett-Packard Company) — Inv. No. 337-TA-446

Bottom line

The Commission's own service list for the Commission Opinion (served May 8, 2002, certified by Marilyn R. Abbott) identifies three attorneys of record for complainant Hewlett-Packard — two from Gray Cary Ware & Freidenrich (HP's outside trial counsel, San Diego and Palo Alto offices) and one from Finnegan, Henderson, Farabow, Garrett & Dunner (the Washington, D.C. ITC-side firm). This is the authoritative primary source: the notice of investigation itself (66 Fed. Reg. 7783) does not list counsel, but the Commission Opinion does. (USITC Pub. 3549, at the "ON BEHALF OF COMPLAINANT HEWLETT-PACKARD COMPANY" service block: https://www.usitc.gov/intellectual_property/documents/pub3549.pdf)

This confirms and upgrades the prior section's hedged statement — it had flagged John Allcock's role as resting only on a secondary trade-press source (the California Lawyer/WSGR article) and as uncorroborated. It is now corroborated by the ITC's own record, and it was incomplete: two additional attorneys of record, including a second Gray Cary lawyer, were omitted.

Counsel — table

How the team was structured

• Two-firm, two-city model: Gray Cary (HP's long-standing outside patent litigation counsel, working out of the San Diego and Palo Alto offices, near HP's Palo Alto HQ) ran the merits/technical case, while Finnegan supplied the D.C. ITC practice group — the standard Section 337 architecture of West-Coast merits counsel plus a Washington § 337 shop.
• Brittingham's OUII background is the notable detail in this lineup. Because § 337 practice at the time was a small, insider bar, staffing a former OUII senior attorney on the complainant's side was a deliberate and common move (and prefigures the revolving-door staffing that remains characteristic of the ITC bar today).
• The ITC's own personnel on the service list were not HP's counsel and should not be confused with them: James B. Coughlan and David H. Hollander, Jr. (Office of Unfair Import Investigations) were the Investigative Attorney, and Peter L. Sultan (Office of General Counsel) was the General Counsel advisor. These represent the Commission/investigation, adverse to no party but not aligned with HP. The Fed. Reg. notice of issuance lists Sultan as the Commission's public-affairs contact (67 Fed. Reg. 21733 / FR Doc. 02-10775: https://www.govinfo.gov/content/pkg/FR-2002-05-01/pdf/02-10775.pdf).
• In-house counsel: HP's Palo Alto legal department necessarily supervised the case, but no HP in-house attorney appears on the service list and I could not identify one — do not assume a name.

Sourcing, gaps, and explicit caveats

• Primary source (counsel): USITC Pub. 3549, Certain Ink Jet Print Cartridges and Components Thereof, Inv. No. 337-TA-446 (Commission Opinion, served May 8, 2002), complainant service block. https://www.usitc.gov/intellectual_property/documents/pub3549.pdf
• Corroboration for Allcock: contemporaneous California Lawyer article republished by WSGR (otteson0302.pdf), in which Allcock is quoted as the Gray Cary attorney on the HP/Microjet ITC matter and the parallel Hewlett-Packard Co. v. Microjet, CV-S-01-0060 (D. Nev., filed Jan. 17, 2001). https://www.wsgr.com/news/PDFs/otteson0302.pdf
• Not a PACER case. This is an ITC § 337 investigation, so there is no district-court docket sheet for 337-TA-446; counsel appear via notices of appearance under 19 C.F.R. § 210.14(b) and are captured in the Commission's EDIS record. I was unable to retrieve the EDIS docket or the parties' pre-trial/hearing filings within my search budget, so I cannot rule out that additional attorneys (e.g., junior Gray Cary or Finnegan associates, or attorneys who withdrew) filed notices of appearance and appeared on earlier—not final—service lists. The three names above are those the Commission served with its opinion on May 8, 2002.
• Do not attribute to this case attorneys whose names surfaced in search results but in other HP matters: e.g., Sean C. Cunningham and Bruce H. Watrous, Jr. appear as Gray Cary attorneys for HP in a 2004 E.D. Tex. case (HP as defendant), and Mark Fowler / Gerald T. Sekimura / William G. Goldman / Aaron Wainscoat appear for Zoran/Oak Technology in a different N.D. Cal. matter. None is confirmed as 337-TA-446 counsel.
• Unverified recollection, flagged: James Pooley is widely reported to have served as AIPLA president (circa 2000-01) and later as WIPO Deputy Director General; the WIPO role is well documented, but I did not verify the AIPLA presidency date in this search and it should be confirmed before being asserted.

Update to the previously generated sections

• The earlier "Sourcing note" listed the D. Nev. parallel action and outside counsel as secondary-source, unconfirmed. Update: Allcock's role as HP's counsel is now confirmed by the primary ITC record; the D. Nev. action (No. CV-S-01-0060) remains sourced only to the WSGR/California Lawyer article and still needs independent confirmation.
• Addition: the earlier section named only Allcock; the record shows two more attorneys of record — James Pooley (Gray Cary, Palo Alto) and Smith R. Brittingham, IV (Finnegan, Washington, D.C.) — and the two-firm structure that is typical of § 337 practice. (The earlier WSGR-derived "five patents" discrepancy versus the six-patent institution record remains as previously flagged; it does not affect the counsel identification.)

I'll research the counsel of record for the respondents in this ITC investigation.

Let me look at the Commission opinion's appearance section and the EDIS docket.

I found a lead — an ID service list mentioning "Jeffrey Weiss, Esq." Let me dig into the full Pub. 3549 document and search for the appearances section.

Counsel of Record for Respondents — Inv. No. 337-TA-446

Bottom line up front. Unlike a modern district court case, this is a 2001–2002 ITC investigation whose appearance information is not retrievable from any publicly indexed source I could access. The authoritative places where respondent counsel would be named — the Commission opinion's APPEARANCES block and the certificate of service appended to Chief ALJ Luckern's January 25, 2002 final initial determination, both reprinted in USITC Pub. 3549 — exist in the document but did not surface usable names in my searches. Accordingly, I will not name counsel I cannot source. What follows is (a) the representation status of each respondent as reflected in the record, (b) the one lead I found, flagged as unverified, and (c) exactly where the names can be recovered.

Important caveat on the record. An indexed snippet from Pub. 3549 does confirm that the appearances section exists and is captioned "ON BEHALF OF MICROJET TECHNOLOGY COMPANY LIMITED:" — i.e., Microjet was represented by counsel of record whose names are listed under that heading. (USITC Pub. 3549, p. 5) The snippet returned the adjacent "Background" text rather than the appearance names, so the specific attorneys remain unidentified in my sources. I am flagging this rather than guessing.

---

What the record actually establishes about who was represented

The finding that Price-Less and ABC "did not appear at the hearing and did not file any prehearing or posthearing submissions" is drawn from the ALJ's final ID as reprinted in the Commission opinion. (Pub. 3549; see also 67 Fed. Reg. 21733 (May 1, 2002)) This strongly suggests those two respondents were effectively unrepresented (or had counsel who never entered an appearance) — a plausible reading reinforced by the fact that the ID's service list directs service to the two parties at their shared Port Charlotte business address (3890 Tamiami Trail) rather than to a law firm, and by their status as small, single-location resellers with no evident litigation presence. I state this as a reasonable inference, not as a verified fact.

---

The one lead I found (unverified — treat with caution)

A snippet from the January 25, 2002 ID's service/address block reads: "Jeffrey Weiss, Esq. … Price-Less Inkjet Cartridge Company 3890-Bb Tamiami Trail Port Charlotte, Florida 33952 … ABCCo.net, Inc. 3890 Tamiami Trail Port Charlotte, Florida 33952." (Pub. 3549)

• Possible reading: "Jeffrey Weiss, Esq." is the attorney on the service list associated with the Price-Less/ABC entries — i.e., counsel (or former counsel) for those two Port Charlotte respondents.
• Why I am not asserting it: the snippet is fragmentary, the "Weiss" line is not clearly tied to a firm, and the adjacent addresses are the parties' business addresses, not a law-firm address. It is equally possible Weiss is an attorney for a different party or a party contact appearing elsewhere in the list. I could not verify his firm, office, admissions, or role, and I decline to characterize him as defense counsel on this record.

Names that are verifiably in the case file (for context — not defense counsel)

• Complainant's counsel: John Allcock of Gray Cary Ware & Freidenrich (San Diego) is reported as HP's lead outside counsel by a secondary trade-press source (WSGR/California Lawyer piece). This is a trade-press attribution I could not corroborate against a docket entry and should be independently confirmed. (WSGR reprint)
• Commission Investigative Attorney (OUII Staff, a party but not defense counsel): James B. Coughlan, Esq., Office of Unfair Import Investigations, named in the notice of investigation. (66 Fed. Reg. 7783-84)
• Commission contact for the orders: Peter L. Sultan, Esq., Office of the General Counsel. (67 Fed. Reg. 21733)

---

Where the respondent counsel names can be recovered (recommended next steps)

Because I could not retrieve them, here is precisely where the names reside:

1. USITC Pub. 3549, APPEARANCES page (the "ON BEHALF OF MICROJET TECHNOLOGY COMPANY LIMITED:" heading) — the definitive list of Microjet's counsel, with firm. (Pub. 3549)
2. The ALJ's final ID (Jan. 25, 2002), certificate of service — lists counsel*(if any)* for every named respondent; and the docket entries for Motion No. 446-3 (HP/Printer Essentials consent-order motion) and the Cartridge Hut consent-order stipulation (Order No. 15), which will bear the signature blocks of those respondents' counsel.
3. ITC EDIS public record for 337-TA-446 (the Commission's electronic docket referenced in the Federal Register notice, historically at dockets.usitc.gov/eol.public; now edis.usitc.gov) — for the complaint, notices, and orders.
4. PACER — District of Nevada, Hewlett-Packard Co. v. Microjet, No. CV-S-01-0060 (D. Nev., filed Jan. 17, 2001) — the parallel damages action against Microjet, which would carry that defendant's U.S. litigation counsel of record (per the WSGR report; docket not independently verified). (WSGR reprint)

Sourcing note

The respondent representation statuses (Microjet fully participating; Printer Essentials and Cartridge Hut terminating by consent order; Price-Less and ABC not appearing) are grounded in the ALJ's final ID and Commission opinion as reprinted in USITC Pub. 3549 and in the Federal Register notices at 66 Fed. Reg. 7783-84 (institution) and 67 Fed. Reg. 21733 (issuance/termination). No respondent attorney's name, firm, or office location could be verified from the sources available to me, and I have not supplied any. The "Jeffrey Weiss" line and the D. Nev. counsel point are unverified leads, not findings.