OEMs Continue to Take a Stand against Patent Infringements

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Dec 16, 2010

Yesterday Seiko Epson announced it had agreed to settle patent infringement lawsuits with Taiwanese ink cartridge manufacturers ULIX and U-Color. The agreement, which was finalized on December 8, was made after the Taiwanese companies accepted Epson’s claims of settlement fees relating to ink cartridge intellectual property rights. Read the full press release here.

This is another judgment in a long-list of patent infringement cases that have been filed with the US and international court systems in the past few years. Many major printer manufacturers have been aggressively protecting their intellectual property, particularly when it comes to supplies. This protection has taken many different forms, ranging from an official letter to the filing of a lawsuit in court. Regardless of the method, the point is the same. Printer manufacturers are making it clear that while they understand that there will be competition for supplies sales, companies offering aftermarket or compatible supplies cannot infringe any of their patents in selling those supplies.

Many credit Seiko Epson with starting the concentrated effort on the aftermarket in terms of supplies patents. It all started in 2006, when Seiko Epson sued 24 companies in Seiko Epson v. Glory South, et al. (No. 3:06-cv-00236-BR) alleging the infringement of 13 patents for the manufacture, import, or distribution of aftermarket ink cartridges for resale in the United States.

Since this filing, Epson has been very active on the legal front to protect its brand. Epson has registered its trademark in over 160 countries and regions, and strengthened programs that exercise the company’s intellectual property rights with regard to counterfeit goods so as to protect consumers from damage caused by these inferior items. Companies including HP, Lexmark, Canon, have followed suit bringing their own patent infringement cases for judgment.

The objective for the OEMs is to stem the tide of product coming into this market that infringes their patents. The cases/complaints serve to thwart companies that may know or think the products they sell are patent infringing to stop selling them or they could be named in a future suit.

InfoTrends has been tracking patent infringement and class-action cases in the supplies market for a number of years. In a report due out in early January 2011, we will examine the latest activities in this market and discuss the emergence of toner patent cases into the spotlight as new build and compatible toner cartridge activity picks up. Be on the lookout for the report – OEMs Protect Supplies through Intellectual Property – early next year.

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