The vast majority of OEM IP enforcement actions in the past decade have been against manufacturers, distributors, and sellers of NBC cartridges. OEMs including Canon, HP, Epson, Lexmark, and others have all successfully obtained injunctions, general exclusion orders, and damages against purveyors of infringing NBC cartridges in courts around the world.
That lengthy history is in stark contrast with recent high-profile victories by legitimate remanufacturers faced with OEM IP enforcement in the U.S. Supreme Court (Lexmark v. Impression Products) and Germany’s highest court, the Federal Supreme Court of Germany (Canon v. wta Carsten Weser GmbH and KMB PrintTechnik AG). You don’t need a weatherman to tell you which way the wind is blowing, and you don’t need a lawyer to tell you which products are going to be the focus of future OEM legal action. Make no mistake, if it was up to the OEMs all aftermarket consumable options would be taken off the market. But the courts of the world have spoken, and the legitimacy and legality of remanufactured cartridges has repeatedly been upheld, while NBC cartridges have repeatedly been found to infringe.
The highest profile legal cases in recent years have been Canon’s lawsuits involving the couplings that connect moving parts in the toner cartridge to the motor inside the printer. These couplings allow printer users to smoothly insert and remove the cartridge from the printer in question, while reliably synchronizing the cartridge’s internal imaging components with the printer’s drive mechanism. These coupling designs enhance the performance of Canon’s cartridges, increase print speeds, and reduce the footprint of the printers, thus improving the end-user experience. According to Actionable Intelligence, Canon has initiated at least 96 lawsuits or other legal actions worldwide from 2014 to June 1, 2018. Many of these cases revolve around patents for a so-called “dongle-gear” that uses a ball and socket style coupling mechanism to make installation and removal of cartridges particularly easy and secure.
In a first round of dongle-gear litigation, Canon succeeded in eliminating copy-cat designs from the market. Canon’s enforcement caused significant business disruption as NBC manufacturers scrambled to come up with “IP Clear” alternatives to Canon’s design, with mixed results. In the U.S., every single party named in that first round of litigation with Canon either defaulted or accepted a settlement agreement favorable to Canon. After the settlements, purveyors of NBC cartridges began selling their new “IP Clear” designs. Thinking they were in the clear, many vendors loudly proclaimed the safety of their new designs.
In the meantime, Canon’s patent lawyers got to work obtaining new patents specifically targeting these “IP Clear” designs. On February 28, 2018, Canon dropped the hammer, suing 49 manufacturers, wholesalers, and dealers of NBC cartridges alleging infringement of Canon’s newly obtained patents. Several parties have already agreed to accept default judgments in Canon’s favor, and once again, sellers of NBC cartridges face legal expenses and disruption to their business, despite selling what they thought were safe, “IP Clear” designs.
