Canon wins recycled inkjet cartridge suit

Canon wins inkjet cartridge suit

Kyodo News

Canon Inc. prevailed Thursday in a lawsuit against a seller of recycled versions of its inkjet printer cartridges in a Supreme Court rejection of a lower court ruling that favored the defendant firm.

This was the top court's first decision ever on whether a manufacturer can have patent rights on recycled versions of its own patented products.

Canon filed the suit against Recycle Assist Co., which sold recycled ink cartridges imported from a Chinese contractor that bored holes in used Canon ink cartridges and poured ink into them made by a different company.

The recycled versions sold for ¥600 to ¥700, compared with between ¥800 and ¥1,000 for genuine Canon ink cartridges.

The Tokyo District Court in December 2004 rejected Canon's suit on grounds that its patent rights did not cover recycled goods that could be categorized as repaired goods.

In January 2006, however, the Intellectual Property High Court upheld the suit, ruling that alteration or replacement of any essential component of a patented product constituted a patent infringement.

The Supreme Court sided with this decision Thursday.

Ninestar Fights Back

Schulte Roth & Zabel Client Ninestar Technology Granted International Trade Commission Review of nitial Determination in Seiko Epson Ink Cartridge Case

New York, NY, July 5, 2007 LAWFUEL - Class Action Litigation Newswire - Schulte Roth & Zabel LLP (“SRZ”) is pleased to announce that the International Trade Commission (“ITC”) has agreed to review a final initial determination by an administrative law judge in the Seiko Epson ink cartridge investigation. SRZ had requested, on behalf of its client, Zhuhai, China-based Ninestar Technology Co., Ltd., that the commission review and reverse the determination, which found that Ninestar and 23 other companies violated Seiko Epson Corp.'s patents for ink cartridges.

First ITC decision to review patent invalidity

The June 29 decision by the ITC is the first time it has agreed to review patent invalidity issues under the altered legal standard for patent obviousness set forth by the U.S. Supreme Court in the landmark decision of KSR International v. Teleflex Inc.Following the KSR International decision, Schulte Roth & Zabel filed a letter with the ITC outlining the significance of the KSR International decision and contending that the new standard set by the Supreme Court for patent obviousness compelled a review and warranted a reversal of the initial determination upholding the validity of various Seiko Epson patents.

New Standards for Patent

The new standard set by the Supreme Court is that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Accordingly, the Commission determined to review whether those portions of the administrative law judge's findings of invalidity for obviousness “are consistent with the Supreme Court's decision in KSR International…”“We are pleased the ITC has decided to review the initial determination,” said Joel Lutzker, partner at Schulte Roth & Zabel and chair of the firm’s intellectual property department. “The new patent obviousness standards set by the Supreme Court’s decision in KSR International v. Teleflex Inc. reflects a shift in jurisprudence for the benefit of industry competition and, ultimately, consumers themselves. Ninestar has fought long and hard in this case to protect the investment the company has made in independently developed technology and we look forward to full Commission review of the initial determination.”