The US District Court in Portland, Oregon
The OEM and its US subsidiaries filed three IP infringement cases against “merchants selling on the Amazon Marketplace”.
Epson stated that the case – taken up by Seiko Epson, Epson America and Epson Portland – was filed on 14 December at the US District Court in Portland, Oregon, and against the following online sellers: HT Tech, Inc. and HT Imaging Inc.; InkJet2U LLC and Worf Corporation; and Shoppers Smart LLC, Houses Investing LLLP and Houses Investing of Florida, Corp. All the complaints refer to infringement of two US patents, namely 6,502,917 and 8,794,749.
The suits “supplement earlier enforcement efforts” by the OEM “to protect trademarks and patents” as well as “ensure that legitimate resellers can compete fairly for sales of printer supplies for Epson printers”. They also “allege extensive sales of patent-infringing cartridges and seek permanent injunctions against further infringements and monetary damages”. Epson added the cases support its “ongoing efforts to protect [IP] and promote fair competition by marketplace merchants”.
The OEM also stated that the complaints “were already adjudicated as valid and enforceable in two well-publicised actions” filed at the USITC (United States International Trade Commission), which resulted in GEOs (General Exclusion Orders) that “bar importation of all newly-built and remanufactured cartridges that infringe the claims”. Epson also reflected that it “has a long history of vigorous legal action to protect the company, consumers and legitimate resellers”.
This has included “a broad range of efforts to reach infringers throughout the distribution and sales channels”, with the two USITC GEOs including the ‘946 GEO awarded earlier this year, and the ‘565 GEO, granted in 2007. Epson noted that it has “worked very closely with US Customs to achieve extensive enforcement” of the GEOs, “resulting in numerous and frequent seizures of infringing shipments over the past two years”.
Another area of action has been “US District Court lawsuits addressing specific infringers with a renewed focus on internet marketplace resellers”, with two recently-filed suits against Amazon and eBay merchants as well as a trademark infringement suit against InkSystem LLC and “related companies” for “alleged counterfeit sales through eBay and Amazon, in addition to its own websites”, with this latter case resulting in seizures of “thousands of counterfeit” cartridges.
Last month, the OEM also filed suits against Nano Business and Technology Inc., an eBay and Amazon reseller “that had previously settled patent infringement claims with Epson”; while it has also undertaken “frequent enforcement of intellectual property infringements and trademark misuse through the brand protection programs administered by Amazon and eBay”.
Epson has also utilised “notice programmes to encourage fair competition”, specifically “by informing resellers of infringing printer supplies of Epson’s intellectual property rights and the procedures for accurately and fairly listing printer supplies for marketplace sales”.
Jilana Miller, Associate General Counsel for Epson, commented: “We are encouraged that enforcement programs have already achieved a high degree of intellectual property compliance and fair competition in traditional retail channels. As more consumers and Epson authorised resellers move to internet commerce, our goal is to provide the same level of confidence in the printer supplies for Epson printers purchased from internet marketplaces as they have in supplies purchased elsewhere.
“We intend to deter internet resellers that continue to infringe Epson’s patents and misuse Epson trademarks, so the large majority of legitimate resellers can compete fairly. We will continue to leverage the cooperation we have received through the enforcement programmes administered by marketplace owners like eBay and Amazon, while taking the legal actions necessary to protect Epson and the legitimate printer supply industry from this type of unfair competition.”