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 who have now responded.
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.
In the response STS Entities deny all claims from Seiko Epson Corporation, Epson America, Inc. and Epson Portland Inc. with a first affirmative filed as “The claims of the ‘749 Patent are invalid because they fail to comply with the conditions and requirements for patentability set forth in 35 U.S.C. § 1 et seq., including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112”, adding “the ‘749 Patent is unenforceable for patent misuse, based on, but not limited to, Plaintiffs continuing unlawful attempts to enforce the ‘749 Patent, which Plaintiffs know or should know is invalid, unenforceable, and/or not infringed.”
STS Entities are asking the courts “that Plaintiffs’ Complaint be dismissed”.
At the same time STS Refill technology, LLC’s “answer and affirmative defences and counterclaims to plaintiff’s complaint for patent infringement and damages” was filed.
STS denies that the products are infringing the ‘749 Patent. In the counterclaim STS alleges that in the original complaint filed it was claimed that “Seiko Epson is the assignee of the ‘749 patent,” but according to STS claims, “Epson America is the exclusive licensee of the ‘749 patent for distributing in the United States Epson ink cartridges that embody the inventions contained in the ‘749 patent,” and Epson Portland “is the exclusive licensee of the ‘749 patent for manufacturing in the United States Epson ink cartridges that embody the inventions contained in the ‘749 patent.”
STS continues to claim “STS has never manufactured, used, imported, offered for sale and/or sold in the United States any products which infringe, either literally or under the doctrine of equivalents” and “desires a judicial determination of its rights and duties with respect to any alleged infringements of the ‘749 Patent.”
