Ongoing Legal Battles Seek to Undermine Aftermarket Confidence

Printer cartridge rechargers in North America, the largest print consumables market in the world, continue to be hit with lawsuits, threatening to distract them from getting on with business. They are calling for a solution to help protect them.

This week, two findings by court judges have ruled against one original equipment manufacturer (OEM)—Lexmark—in two separate cases against aftermarket supplies companies. Firstly, all nine justices in the Supreme Court have ruled that components manufacturer and distributor Static Control has the right to sue Lexmark on the grounds of false advertising arising out of Lexmark’s Prebate program. Static Control claims Lexmark falsely told US rechargers that remanufacturing Prebate cartridges was illegal.

Then in a separate case in the Cincinnati US District Court, Judge Michael Barrett has dismissed a Lexmark case against cartridge remanufacturer, Impression Products. Barrett ordered there was no case against Impression Products over their alleged infringement of Lexmark’s cartridge return Prebate program. Impression Products argued successfully that Lexmark was trying to force consumers to only use their prebate cartridges once, thus preventing competition.

However, the motion to dismiss another action by Lexmark against remanufacturer Impression Products, was denied by Barrett. It had been argued during the case, that printer cartridges sold outside of the USA should also lose all patent rights, as do those sold within the USA. The arguments had been based on the Kirtsaeng vs Wiley copyright case.  Judge Barrett concluded, “the complete lack of consideration of the context, history and practical implications of international patent exhaustion in Kirtsaeng, [means] that the Supreme Court did not intend to implicitly overrule Jazz Photo and that Jazz Photo remains controlling precedent on patent exhaustion abroad.”

Just eight weeks ago, 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.

Most rechargers do not have the time and finance to employ attorneys to check all the patents, on all the components, on all the cartridges they remanufacture. The lawsuits are being targeted by the OEMs against the rechargers, and not the actual manufacturers of the components. “We use the components supplied to us but when the OEM sues us, the supplier of the parts will not indemnify us”, Recycling Times was told by one concerned recharger.

This key issue is at the core of the aftermarket RT Imaging Summit which is being held at the new South Point Casino in Las Vegas on May 29 and 30.  Patent attorneys at the front line will engage with the aftermarket industry to look for solutions. Rechargers are expecting one major outcome from the summit will be a affordable subscription service which can keep them updated on patented components and parts they need to replace worn ones on the cartridges during remanufacture.  More information is available from the dropdown CONFERENCE menu at

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