Canon Lawsuit Targets Aftermarket Suppliers

On January 29, Canon USA filed lawsuits in New York’s Southern District Court against 18 toner cartridge remanufacturers and other aftermarket suppliers. The copier and printer OEM giant alleged the companies involved infringed patents related to the OPC drum gears of toner cartridges used in more than 50 models of Canon and Hewlett-Packard laser beam printers. Canon is now seeking damages and injunctive relief.

A U.S.-based source told Recycling Times, “These new suits concern 9 patents on the ‘dongle gear’. The printers involved were released in 2004, but still have a big volume for the aftermarket.” According to Canon, those companies have infringed Canon’s U.S. Patent Nos. 8,135,304; 8,280,278; 8,369,744; 8,433,219; 8,437,669; 8,494,411; 8,532,533; 8,565,640; and 8,630,564.

The 18 defendants named in the lawsuit are:

• Acecom, Inc. – San Antonio
• American Internet Holdings, LLC
• Aster Graphics, Inc.
• Aster Graphics Co., Ltd.
• Green Project, Inc.
• Ink Technologies Printer Supplies, LLC
• Innotex Precision Ltd.
• International Laser Group, Inc.
• Jiangxi Yibo E-tech Co., Ltd.
• Linkyo Corp.
• OnlineTechStores.com, Inc.
• Print-Rite Holdings Ltd.
• Print-Rite N.A., Inc.
• Print-Rite Unicorn Image Products Co. Ltd.
• Provantage, LLC
• The Supplies Guys, LLC
• Union Technology Int’l (M.C.O.) Co. Ltd.
• Wazana Brothers International, Inc.

According to Steve Weedon, CEO of Discover Imaging Products Ltd., “In the latest law suit the patents concern the so called‘dongle gear’ (a rotational coupling device design) to drive the cartridge. The drum gear and dongle are on the cartridge. So it is on the used cartridge when empty for the remanufacturer to reuse. The ‘dongle’ is easily removed to enable reuse. It is attached to the drive gear of the drum by a snap in pin. The drum gear can be removed and reused. So for genuine cartridge remanufacturers the gear and dongle can be reused. This would require the OPC maker to make a drum with only an end cap on one end. To date no OPC is offering a drum like this. Of course for new built cartridges a new gear and dongle is required.”

In one of the first responses to the lawsuit by any company, MSE’s Senior Vice President Luke Goldberg told Recycling Times, “We, in coordination with our drum suppliers are diligently investigating these claims and will open immediate dialogue with Canon to fully comprehend the nature of their complaint. MSE fully respects the intellectual property of others and looks forward to working with Canon to resolve this. MSE has been committed to US-made innovation and remanufacturing for 20 years and we fully intend to address this issue quickly and will endeavor for this to create no disruptions for our customers. Our customers can expect the same level of quality, support, differentiation, and commitment to our collective success as we work through this. Please support us with your continued business and partnership.”

At this stage, Canon has not worked through the United States International Trade Commission (USITC). Of course, legitimate remanufacturers—those using the legal doctrine of the right of permissible repair to refurbish and recharge a spent OEM cartridge—will not have a problem if they do not replace the “dongle” gear in the spent cartridge. Canon alleges that newly-made gears, or gear couplings—whether twisted or not, prism shaped or not—infringe at least 9 of its patents (listed above).

Recycling Times will follow closely on the development of the new Canon lawsuit. It will be one of the hot topics at this year’s Recycling Times’ RT Imaging Summit meeting in Las Vegas May 29 and 30 (venue still being confirmed). Industry leaders are being urged to mark this date in their diaries to attend and get updated firsthand on this Canon court action and other OEM lawsuits.