Munich’s Court of Justice
According to sources, the OEM’s fast track injunctions have been withdrawn and replaced with the “normal” injunction process, and a decision stayed pending a hearing by the European Patent Office of an appeal against one of the Samsung patents at the heart of the case.
Samsung sought a preliminary injunction against seven resellers on 22 and 26 November 2013 in the District Court I Munich, and after an initial hearing on 3 April, the judgement of the Court was expected on 18 September. According to a person familiar with the case, now that the “preliminary” injunction decision has been delayed, it appears that the traders involved in the action could sell the appropriate Samsung toner cartridges until the outcome of the patent appeal and subsequent judgement is known.
Digital Imaging (German) reported on the delay of the injunctions, which were based on an infringement claim in November 2013 against seven German cartridge resellers, four of which had appealed – HQ Cartridges of Seevetal, CNN PrintPool of Hamburg, Großneuhausen-based Kolor Office Supplies, and North-Toner of Oststeinbek.
In turn, Samsung had taken up “substantive proceedings” against five other German companies for infringing the same patent, 1 975 744 B1, at the Regional Court in Munich, and whilst those companies were not named “out of consideration” by Digital Imaging, the news outlet stated that four of these distributors were “customers of HQ Cartridges”, whose patent attorneys took up their legal representation. This other case went to court on 18 September before the Civil Chamber of the Regional Court.
The HQ attorneys took on the joint representation in the case and for the main case there was a court hearing on 18 September in Munich. During this, it was decided that the dispute amount was set at €100,000 ($126,814), as well as that the separate cases were put together for a combined negotiation, but not for a joint decision.
The “preliminary” injunctions concern alleged distribution of illegal new-build toner cartridges said to infringe Samsung patents, and the OEM claimed at the time that not only were the resellers “provisionally” prohibited from selling the illegal products, but that the lawsuits were intended to protect “consumers and companies that produce and sell eco-friendly remanufactured toner cartridges”.
The court in Munich agreed to the delay of the injunctions “on the basis of doubt” as to the “validity” of the patent said to have been infringed, and the “main proceedings” were postponed “until [the patent is] reviewed by the European Patent Office”, though as Digital Imaging pointed out, this may “drag on for one to two years”. The decision is based on the defendants saying that the patent, at the time of registration, was already part of existing technology – so it should not have been granted again afterwards.
The OEM revealed in August that it had obtained injunctions against six more German resellers at the District Court in Munich, concerning again the “sale and distribution of illegal replica toner cartridges” described as “newly manufactured, unlicensed, non-original toner cartridges” for the following printers: CLP-310; CLX-3170; CLP-320; CLX-3180; CLP-365; CLX-3305; Xpress M2825; M4025 2875; and ProXpress 4075.