But judge affirms Lexmark’s toner-cartridge program
Lexmark failed to prove that Static Control Components encouraged remanufacturers to violate Lexmark patents – this was the verdict of the jury last week in the long-running Static vs Lexmark legal case.
While the verdict in the U.S. District Court was in Static Control’s favour, it does not nullify the Lexmark program at the centre of the case. The judge in the case earlier ruled the program is valid, as well as ruling in Lexmark’s favour on several key issues before and during the trial.
The verdict does not entitle Static Control to seek monetary relief from Lexmark. SCC had initially sought damages by claiming Lexmark violated antitrust laws, but the judge threw that claim out.
Static Control alleged anti-competitive measures on Lexmark’s part. The jury agreed, though that portion of its verdict is only an advisory for the judge, who will have the final say.
“I think this is a very pro-consumer, money-saving, economically sound decision for the American consumer,” Static Control CEO Ed Swartz told the Lexington Herald-Leader. “This gives the consumer a choice he would not have, had Static Control not fought Lexmark.”
Lexmark said that the decisions affirm the legality of Lexmark’s Return Program for laser printer toner cartridges and affirm that certain remanufacturers are violating Lexmark patents when they remanufacture Lexmark Return Program toner cartridges.
Central to the litigation brought by Lexmark against Static Control Components Inc. is Lexmark’s Return Program for laser printer toner cartridges under which customers can get discounted cartridges in return for agreeing to return the used cartridges only to Lexmark for remanufacturing or recycling. Lexmark uses the returned laser printer toner cartridges in its own remanufacturing business.
Over the course of the litigation, the court ruled that Lexmark’s patents were valid, covered Lexmark’s toner cartridges and that Lexmark’s patent license under the Lexmark Return Program was valid and enforceable.
The jury found that Lexmark had failed to prove that Static Control had induced its customers to infringe Lexmark’s patents, but the court found that Static Control engaged in direct patent infringement and that certain third parties who engaged in the remanufacture of Lexmark’s Return Program laser printer toner cartridges were in direct violation of Lexmark’s patent rights.
Three remanufacturers who were parties in the lawsuit earlier, NER Data Inc., Pendl Companies Inc. and Micro Solutions Enterprises (MSE)/Wazana Brothers International Inc., settled and admitted the validity and enforceability of the Lexmark patents and the Lexmark Return Program. In addition, Static Control’s antitrust and false advertisement allegations against Lexmark were dismissed by the court.
“We will continue to pursue claims whenever and wherever necessary to protect Lexmark’s intellectual property,” said Vincent J. Cole, Lexmark vice president and general counsel.
Lexmark originally filed suit in U.S. District Court, Eastern District of Kentucky, in 2002.