The Supplies Guys, LLC and American Internet Holdings, LLC (collectively known as Supplies Guys) settled in the US District Court case, though remain in the USITC case.
US District Court for the Southern District of New York
Canon’s latest announcement stated that the two companies, known as Supplies Guys, have settled with the OEM in the US District Court for the Southern District of New York, becoming the latest defendant to settle at the District Court since the case began in February 2014. The case at the United States International Trade Commission (USITC) began in May 2014, and both cases concerned infringement of the OEM’s “dongle-gear” within toner cartridges – specifically the HP P2035, 2055 and P3015 – which are sold “for use in more than 50 models of Canon and HP laser beam printers”, Canon stated at the start of the case.
Supplies Guys agreed to a Consent Judgement and Permanent Injunction at the District Court – concerning infringement of patents including 8,280,278, 8,433,219, 8,437,669, 8,494,411, 8,630,564, 8,676,090, 8,682,215, and 8,688,008 – which “prohibits Supplies Guys from making, using, selling and offering for sale in the US, and from importing into the US, the toner cartridges and photosensitive drum units that Canon accused of infringement”.
Canon added its statement that “throughout the development, sales and marketing process, Canon respects the intellectual property of other companies and individuals and expects others to similarly respect Canon’s intellectual property rights. Canon remains committed to pursuing legal enforcement against those who do not respect Canon’s intellectual property”.
The two companies remain in the USITC case however, which is moving towards a General Exclusion Order (GEO). Supplies Guys, along with Aster Graphics, Inc., Jiangxi Yibo E-Tech Co., Ltd. and Aster Graphics Co., Ltd., are said in documents not to have “filed a pre-hearing statement or brief”, or “submitted or served any direct or rebuttal exhibits”, and so Canon “in due course” will “move for an order to show cause why they should not be found in default”.
This does not mean that the investigation has ended – as the USITC’s documents stated, “the joint motion to suspend the hearing schedule is granted […] but the investigation has not been terminated”, and the same document added that “Canon intends to file a motion for leave to file a motion for summary determination in connection with a request for a General Exclusion Order”, while the remaining defendants did not take a position on the joint motion, and so remain in the case.
The remaining companies -as per the earlier mention of an order “to show cause why they should not be found in default” – have been “deemed to have abandoned or withdrawn all of their contentions in this investigation”, with Canon declaring its intent to seek a GEO, which will ban any infringing cartridge products from being imported into and sold in the USA.
ILG stated last week that it was “pleased to confirm that following the resolution of its dispute with Canon, ILG and Turbon USA Inc. will continue to offer its full line of remanufactured laser toner cartridges that will comply with the terms of the consent order and injunction”. Other companies that have settled in the case since it began include Acecom, Do It Wiser and Green Project; ACM Technologies, Grand Image LLC, OnlineTechStores, Nectron, Provantage, Printronic and LD Products.