Prebate was declared invalid in April 2009, signalling victory for Static Control.
However Lexmark had sought a retrial on the grounds that part of the jury’s verdict was “against the weight of the evidence”, that it was “prejudiced before and during the trial by various rulings of the court”, and that “certain jury instructions were erroneous and prejudicial to Lexmark”.
Among many different points of contention, Lexmark claimed several different statements from Static Control caused it to be prejudiced at trial, including referring to the OEM as a “monopolist” and the use of the phrase “killer chip”.
However, the United States District Court ruled on 28 October that the motion for a retrial will be denied, having rejected each of Lexmark’s arguments.
The case originally began in 2002, when Lexmark alleged that Static Control had violated the Digital Millennium Copyright Act by getting around the lockout system used in Lexmark’s Prebate cartridges.
The cartridges were to be used only once before being returned to the OEM, under a license agreement that also saw them sold below the normal price.
In 2003, the court granted a preliminary injunction to Lexmark, blocking Static Control’s distribution of the chips.
However, the company appealed to the Sixth Circuit Court of Appeals, and three judges issued a ruling in Static Control’s favour, finding that it had not violated the DMCA.
In April 2009, Skip London, General Counsel for Static Control said: “Static Control has believed that Lexmark could not use their patents to prevent remanufacturing of prebate labeled toner cartridges since the beginning. After twelve years of debates, and six years of lawsuits, it is good to see that the Judge in Kentucky, as well as the United States Supreme Court agrees with our position.”
More information on the new ruling, and background information on the case, can be found here.
Static Control will be a releasing a statement shortly. Lexmark have also been contacted for comment.