The OEM has named Badger Office Supplies Ltd., Inkjet Direct Ltd. and Greentrees International Ltd. for infringement of its EU patent named in a number of other EU-based cases this year.
The High Court of Justice of England and Wales
The announcement by Canon stated that the patent infringement action commenced today at the High Court of Justice of England and Wales against the three companies, for what it says is infringement of its patent EP 2 087 407 “by, inter alia, the importation, manufacture and sale of certain toner cartridges for use in various models of Canon and Hewlett-Packard laser beam printers”.
The OEM noted that it is seeking “various remedies including an injunction and damages”, and repeated its usual IP statement, pointing out that “throughout the development, sales and marketing process, Canon respects the intellectual property rights of other companies and individuals and expects others to do the same. Canon remains committed to taking legal action against anyone who does not respect Canon’s intellectual property rights”.
The OEM has been pursuing infringement of a separate European patent in cases begun against companies across Europe and beyond throughout 2014: including Seine and Aster in the Netherlands; KMP and wta as well as tintenalarm.de in Germany; Zephyr SAS and Aster in France; European Cartridge Warehouse Ltd. and Printer Supplies Technology Ltd. in the UK, though both have since filed for dissolution; and X-Com Shop Ltd. in Russia.
The Recycler has contacted the three companies for comment, with Inkjet Direct Ltd. responding with the following statement: “Today Canon announced legal action against Inkjet for infringement of its 407 gear/dongle patent. Inkjet has been in discussion with Canon for some time to try and resolve this matter in a friendly and reasonable way. Inkjet fully respects OEM patents.
“Inkjet sells new-build and remanufactured HP toner cartridges:
“New-build toners: Without admitting any infringement, Inkjet has ceased sale of the six new-build toners which Canon alleged infringe the 407 patent.
“Remanufactured toners: Canon believes that any remanufactured toner reusing OEM components infringes the 407 patent. In trying to settle this matter Canon insisted that Inkjet needs to agree that the mere act of assembling an OEM toner infringes its patents, even if each separate component does not infringe its patents.
“Inkjet has asked Canon to clarify at what point it regards a remanufactured toner to infringe its patents. It asked Canon: ‘Please clarify the level of permitted repair to an OEM empty before it infringes (in your view) the 407 patent. Here are a number of possible scenarios. Please advise whether you regard each as infringing the 407 patent or not. For all options assume the waste hopper is emptied and the hopper cleaned/refilled with new toner.
- No replacement of any parts.
- Replacement of a minor part e.g. magnetic roller or wiper blade.
- Replacement of OPC fitted with a new gear/coupling which avoids infringing the 407 patent.
- Fit OEM gear/coupling from that empty (not another empty) onto a new OPC and the new combined part then assembled into the empty.
- 2 and 3 together.
- 2 and 4 together.’
“Canon has been unwilling to answer these questions. We feel it is in the interests of the global remanufacturing community to seek clarity as to the rules regarding remanufactured cartridges.
“Inkjet continues to sell HP/Canon aftermarket cartridges, whilst fully respecting the Canon 407 OEM patent.”