In a significant legal development, US District Judge William Jung recently issued a pivotal decision in the longstanding patent infringement case pitting Lexmark International against Universal Imaging Industries.
Recently, US District Judge William Jung issued a decision in the long-running legal action brought by Lexmark International (Lexmark) against Universal Imaging Industries, LLC (UII), alleging infringement of one or more of Lexmark’s patents relating to chips produced by UII.
The court has granted Lexmark partial summary judgment, confirming that specific patent claims are not invalid. However, the court has also granted UII partial summary judgment, stating that UII’s Arwen Devices do not infringe the Address Change Patents literally or under the doctrine of equivalents and that the UII Pensive Devices do not literally infringe the Punch Out Bit Field Patents and that the remaining unresolved issues will be presented to the jury.
Accordingly, the UII Arwen chips (MS/MX and CS/CX families) do not infringe Lexmark’s patents and are no longer part of the case. The decision also clears the Pensive chips (E260, T650, and C540 families) that literally do not infringe Lexmark’s punch bit patents. Only minor issues regarding the Pensive chips remain unresolved, which UII believes do not infringe, and a jury will decide these issues in the trial.
Lexmark filed the patent infringement complaint against UII in the United States District Court in Florida in May 2018. The lawsuit alleged that UII designed, manufactured, and marketed universal toner cartridge authentication devices, allowing unauthorized and counterfeit devices to work with Lexmark printers and private brand printers like Dell, Lenovo, and Olivetti.
Lexmark claimed that UII specifically targeted their products, citing a previous lawsuit from 2004 where Lexmark successfully argued for patent violations by UII’s President, Stephen Miller.
Lexmark accused UII of infringing multiple patents and sought a trial by jury to prove the violations, along with permanent injunctions, damages, legal fees, and other costs. This lawsuit followed a previous legal battle between Lexmark and Impression Products, which ended in defeat at the US Supreme Court.
The issue of damages was not resolved because the court believes there’s a factual dispute that prevents summary judgment. The court mentions a law (35 USC § 284) that allows for compensation if an action directly caused harm. UII talks about the Panduit test, but the court doesn’t investigate it. There’s a dispute about whether UII’s sales made Lexmark lose customers. Lexmark says UII used their patented technology, causing customers to buy Lexmark products. Experts in a trial will discuss these issues. If Lexmark can’t prove this or calculate damages properly, UII can bring up their argument again later.
Marco Torello of Italy based chip supplier, Italeco Srl, told The Recycler, “We are proud to say that UII (Italeco) chips for use in Lexmark printers are THE SOLE that DO NOT infringe any patents, officially. This important news will open a new era in our Industry. Thanks to that aftermarket industry will be able to produce cartridges for us in Lexmark Printers 100% patent free.”
Our take on this: This is potentially a big step forward for expanding the reuse of Lexmark consumables, but one thing is for sure: Lexmark won’t roll over on this because there is too much at stake, especially as new ecodesign legislation is pending. Reuse is a crucial driver forming the legislation.
