In December 2018, Epson filed a complaint for patent infringement and damages in the United States District Court for the Southern District of Florida, Palm Beach Division against Florida-based companies STS Refill Technology, LLC, STS Group Holding, Inc., STS Designer Inks LLC and 8300 Congress LLC. The two companies have now filed a proposed consent judgement for the court’s approval to end their dispute.
In legal documents viewed by The Recycler, Epson claimed infringement of its US Patent No. 8,794,749, also known as the ‘749 patent, and describes the infringing products as “aftermarket ink cartridges for use with Epson printers.”
The ‘749 patent is part of a general exclusion order issued by the USITC prohibiting the importation into the United States of such infringing items.
Epson described the defendants in this case as “wilful infringers” and violators of the exclusion order, and says it is seeking a preliminary and permanent injunction, as well as damages “and other relief”.
On 18 April 2019 defendants STS Group Holdings, Inc., STS Designer Inks and 8300 Congress LLC (“STS Entities”) filed a response to the originally filed complaint as well as STS Refill Technology, LLC (“STS”) filing a counterclaim against Seiko Epson Corporation, Epson America, Inc. and Epson Portland Inc.
However, most recently on 10 January, Epson and STS filed a proposed consent judgment and permanent injunction, which said: “The parties having considered the facts and applicable law and having agreed to the entry of this Stipulated Final Consent Judgment and Permanent Injunction (“Consent Judgment”), and the parties having stipulated that there is no just reason for delaying entry of final judgment in this action, (…)”.
The consent judgement stipulates that although the defendants should refrain from “sale of the Accused Products and any products that are no more than colorably different therefrom”, “defendants may sell remanufactured ink cartridges made from used genuine Epson ink cartridges having the genuine Epson circuit board where the cartridge has been refilled with ink, and other non-infringing ink cartridges.”
The parties seek to terminate this litigation through this consent judgment and is asking the court to approve its proposed agreement.
