Actionable Intelligence - Canon IP Report

Around the World,
Canon Cracks Down on

Patent-Infringing Toner Cartridges
THE PRINTER AND SUPPLIES INDUSTRY’S LEADER FOR NEWS AND ANALYSIS
Actionable Intelligence | Around the World, Canon Cracks Down on Patent-Infringing Toner Cartridges
Legal Disclaimer Copyright © Actionable Intelligence, 2017. All Rights Reserved.

No part of this report may be reproduced without the express consent
of Actionable Intelligence.
© 2017 Actionable Intelligence » THE PRINTER AND SUPPLIES INDUSTRY’S LEADER FOR NEWS AND ANALYSIS ii
Canon has used For more than a decade, the global markets for toner cartridges have been flooded
the unique design with patent-infringing products. Seeking to gain an unfair price advantage, certain
third-party supplies manufacturers routinely reverse-engineer OEM cartridge designs
of its coupling
without regard for patented technologies. These unscrupulous firms then bring the
units to enhance
resulting patent-infringing cartridges to market at artificially low prices. This practice has
the performance
adversely affected the overall market for legitimate cartridges from hardware manufac-
of its cartridges turers and third-party supplies vendors by putting downward pressure on prices.
and improve the
Patent-infringing compatible cartridges, or so-called “clones,” have had an especially
overall end user negative impact on the market for cartridges used in Canon’s single and multifunction
experience. laser printers and HP’s LaserJet machines, which are based on Canon technology.
The worldwide population of Canon and HP laser devices numbers in the hundreds
of millions, and most clone makers target these machines because the large installed
base represents a huge opportunity. To protect the market, however, Canon has grown
increasingly assertive in exercising its patent rights when it finds companies violating its
intellectual property. The company remains vigilant in monitoring the market and has
filed six complaints in 2017 alone.
Canon’s Technology
Because much of the image processing performed in Canon printers and HP LaserJet
machines occurs within the toner cartridge itself, consumables play a big role in the overall
performance of these devices. The toners and toner cartridges used in these machines often
represent breakthroughs in various fields, including chemistry, electrical and mechanical
engineering, optics, and much more. Canon invests heavily in upgrading its toner cartridges
to ensure that the performance of machines that feature its technologies provide optimal print
speeds and image quality. To protect its investments, Canon has established a substantial
patent portfolio around its toners and cartridges.
One mechanism that is essential to the proper operation of Canon and HP LaserJet devices is the
coupling that connects the moving parts in the toner cartridge to the motor inside the printer. The
coupling must allow the cartridge to be easily inserted into or removed from a printer as well as
synchronize the rotation of the cartridge’s imaging parts with the printer and prevent these
parts from slipping. Canon has used the unique design of its coupling units to enhance the
performance of its cartridges and improve the overall end user experience. Although the
internal cartridge parts may vary from one SKU to another, Canon engineers typically rely on
the same basic coupling design across imaging platforms.
To protect the patents on its unique design, the company filed suits in U.S. federal court in
2010 and 2012 against various companies based in China, Hong Kong, Mexico, the United
© 2017 Actionable Intelligence » THE PRINTER AND SUPPLIES INDUSTRY’S LEADER FOR NEWS AND ANALYSIS 1
To date, Canon States, and Vietnam, alleging that they had violated patents on its twisted-prism drive
component. The firm also requested that the U.S. International Trade Commission (ITC)
has prevailed in its initiate an investigation into what Canon claimed was the widespread patent infringement of
cases around the its intellectual property by manufacturers inside and outside of the country along with their
world, although the channel partners. All of the defendants ultimately settled with Canon and the ITC issued
exclusion orders to prevent the importation of compatible Canon toner cartridges. Although
results of several the firm was successful in exercising its U.S. patent holder rights on the twisted-prism gear,
are still unresolved. the patents expired in 2016.
Dongle Gears
Early in 2014, Canon returned to federal court with lawsuits alleging that several companies had
violated some of its coupling technologies, but these suits did not involve the twisted-prism gear.
Instead, the case claimed that 18 companies had violated nine newer patents protecting
technologies on what has become known as Canon’s “dongle gear.” A couple of months after
Canon filed its lawsuit, it once again requested that the ITC investigate the matter and issue
orders to exclude the importation of products that violated the nine patents in question.
Like the twisted-prism gear, the dongle coupling allows for easy replacement of new car-
tridges and for the image-processing components inside the cartridge to be synchronized
with the printer’s motor while preventing any slippage. Unlike the twisted element on the old
gear, the dongle drive features a movable joint similar to a universal joint in an automobile.
The dongle gear is more flexible and can move around as the cartridge is being inserted.
After filing suit in U.S. federal court, Canon moved swiftly in multiple geographies to protect
the patents on its dongle gear. Within several months, the company filed suit in the District
Court of The Hague in the Netherlands, before the Paris First Instance Court in France, in
the High Court of Justice of England and Wales, and in the District Court of Düsseldorf in
Germany. In addition to the initial wave of lawsuits in Europe, Canon has filed suits in Italy
as well as in regions outside of the Euro zone, including Brazil and Russia. (For more details
regarding the various cases, see the accompanying table.)
To date, Canon has prevailed in its cases around the world, although the results of several
are still unresolved. As a result of Canon’s various courtroom wins, dozens of companies
worldwide have stopped marketing cartridges that violate various patents related to the cou-
plings used on many Canon and LaserJet-branded cartridges. This year alone, U.S. Customs
agents have seized a number of shipments of patent-infringing Canon compatible toner
cartridges and prevented them from entering the United States.
Given the string of legal victories Canon has enjoyed, we expect to see the company con-
tinue to actively protect the patented technologies found in Canon and HP LaserJet toner
cartridges. While it has been a couple of years since Canon filed suit in the United States, it
remains active in Europe. Given the fact that many suspiciously inexpensive compatibles are
still available online at sites such as Amazon, eBay, and others, we feel it is only a matter of
time before Canon files more suits in U.S. federal court.
Lawsuits Filed by Canon Inc. Alleging Patent Infringement of Dongle Gear Patents
Most recent
Defendant Venue Patents Date Filed Status
action
N/A Coemedia GmbH, District Court European Aug. 2017 The court granted Canon preliminary
Moreinks Limited, of Düsseldorf patent injunctions against Coemedia, Moreinks
and Printperfect Ltd. (Germany) 2 087 407 Limited, and Printperfect, enjoining them
from selling patent-infringing cartridges.
All three defendants sell cartridges primarily
through Amazon.
N/A Jakubowski und Gert GbR Germany European Sept. 2017 Without filing in German court, Canon said
patent that Amazon vendor Jakubowski und Gert
2 087 407 GbR signed a cease-and-desist declaration
agreeing to refrain from marketing patent-
infringing toner cartridges. The vendor
also agreed to pay damages to Canon and
destroy any remaining patent-infringing
cartridges in its possession.
Oct. 2017 JT Company District Court European H2 2017 Canon reported that it was awarded a
of Düsseldorf patent preliminary injunction against the defendant
(Germany) 2 087 407 and its managing director. The filing is one
of a number similar lawsuits that accuse
small companies that sell third-party
imaging supplies on Amazon of infringing
Canon’s patent.
Sept. 2017 CBD Group Inc., U.S. U.S. patents Jan. 2017 The ITC issued seizure-and-forfeiture
ICS/Cartridge King, International ‘278, ‘564, orders to these companies throughout
A Smart Choice—3G, Trade ‘215, ‘090, 2017 after U.S. Customs found that their
Manoj Diora Commission and ‘0083 shipments contained items violating the 337-
TA-918 GEO.
June 2017 M & S Vertrieb Service OHG District Court European H1 2017 The District Court of Düsseldorf awarded
of Düsseldorf patent Canon a preliminary injunction.
(Germany) 2 087 407
June 2017 J&H Greentech & Trading Ltd. Court of European Aug. 2016 Canon reported it settled after J&H
Rome (Italy) patent Greentech & Trading agreed that its
2 087 407 Prestige Cartridge business would not
market patent-infringing cartridges for
Canon and HP laser printers worldwide. It
appears that the litigation also spread to
Germany prior to the settlement.
Jan. 2017 Consumable Direct Ltd. District Court European H1 2017 District Court of Düsseldorf grants Canon
of Düsseldorf patent an ex parte preliminary injunction against
(Germany) 2 087 407 the defendant, which sells products under
the Color Direct brand on Amazon.
Continued next page
Lawsuits Filed by Canon Inc. Alleging Patent Infringement of Dongle Gear Patents (continued)
Most recent
action
Dec. 2016 Blue Planet Trading, U.S. U.S. patents Jan. 2016 The ITC issued seizure-and-forfeiture
EC Enterprise, International ‘278, ‘564, orders to these companies throughout
Emerald Recycling, Trade ‘215, ‘090, 2016 after U.S. Customs found that their
Graphic Toners, Commission and ‘0083 shipments contained items violating the 337-
Laser Pros International, TA-918 GEO.
Ninestar Technology Co.,
Quantum Tech International,
SID Trading,
Smart A,
Spectrum Imaging,
Tech-Optics,
Topmay Inc.,
Universal Ribbon Corp.,
Widenrich Imaging Technologies,
Xcess Technology
May 2016 Two unnamed Brazilian Rio de Brazilian Unknown Few details emerged from Brazil regarding
companies Janeiro patents Canon’s pursuit of companies infringing
District Court PI 0720506-6, the OEM’s patents in that country. Canon
(Brazil) PI 0807733-9 did report, however, that the court granted
preliminary ex parte injunctions ordering the
defendants to abstain from marketing the
patent-infringing toner cartridges involved in
the court actions. Canon said it was seeking
both injunctive relief and damages.
Feb. 2016 Acecom, Inc., U.S. District U.S. patents Jan. 2014 Initially, Canon filed 11 separate suits in
ACM Technologies Inc., Court for the ‘304, ‘278, the U.S. District Court for the Southern
American Internet Holdings, Southern ‘744, ‘219, District of New York accusing 18 companies
Aster Graphics companies, District of ‘640, ‘564, of violating nine patents found in certain
Do It Wiser, New York ‘669, ‘411, Canon and HP toner cartridges. The OEM
Grand Image, ‘085, ‘090, then added three more patents to the suit
Green Project, ‘215, ‘0081 and later filed an additional 10 patent-
Ink Technology Printer Supplies, infringement complaints against 19 more
Innotex Precision, firms. Later, Canon dropped certain patents
International Laser Group, from the complaints. All of the patents
Jiangxi Yibo E-Tech Company, centered on the dongle gear used to rotate
Katun Corp., internal parts inside Canon and HP toner
Linkyo Corp., cartridges. Eventually, all of the defendants
LD Products, either defaulted or settled with Canon.
Nano Pacific Corp.,
Nectron International,
Ninestar companies,
Onlinetechstores.com,
Print-Rite companies,
Printronic Corp.,
Provantage,
Seine companies,
Shenzhen ASTA Official
Consumable,
The Supplies Guys,
Union Technology International,
Wazana Brothers International,
Zinyaw
Continued next page

Most recent
action
Feb. 2016 Badger Office Supplies Limited, High Court European Aug. 2014 The defendants settled with Canon and
Inkjet Direct Limited, of Justice of patent agreed not to market certain products which
Greentrees International Limited England and 2 087 407 Canon accused of infringement.
Wales (UK)
Dec. 2015 Amazon.com, U.S. U.S. patents Jan. 2015 The ITC issued seizure-and-forfeiture
ITC Supplies, International ‘278, ‘564, orders to these companies throughout
Lasermasters LLC, Trade ‘215, ‘090, 2015 after U.S. Customs found that their
Smart and Easy Corp. Commission and ‘0083 shipments contained items violating the 337-
TA-918 GEO.
Sept. 2015 OOO Softtrade Moscow City Russian Nov. 2014 Canon’s second Russian case alleged
Economic Patent the defendant sold its Hi-Black brand of
Court 2467370 cartridges on the Russian-language website
(Russia) hi-black.ru. The case was settled in Canon’s
favor by the Moscow State Arbitration Court,
which required the defendant to destroy its
inventory of patent-infringing product and
cease marketing the goods. The firm was
also found liable for damages and paid
Canon an undisclosed amount.
Aug. 2015 Thomas Zenkel (operator of District Court European July 2014 Court ruled the defendant must stop
titenalarm.de) of Düsseldorf patent marketing patent-infringing Canon
(Germany) 2 087 407 compatible toner cartridges and awarded
Canon an undisclosed amount for damages.
Aug. 2015 Acecom, Inc., U.S. U.S. patents May 2014 After conducting an extensive investigation
ACM Technologies, International ‘304, ‘278, (ITC investigation 337-TA-918) upon
American Internet Holdings, Trade ‘744, ‘640, Canon’s request, the U.S. ITC issued a
Aster Graphics companies, Commission ‘564, ‘085, general exclusion order (GEO) barring
Do it Wiser, (ITC) ‘090, ‘215, entry into the United States of certain
Grand Image Inc., and ‘0082 toner cartridges with dongle gears and
Green Project, components that infringe Canon’s U.S.
Ink Technologies Printer Supplies, patents ‘278, ‘564. ‘215, ‘090, and ‘008.
Innotex Precision, Numerous respondents defaulted in
International Laser Group, the investigation or were deemed non-
Jiangxi Yibo E-Tech Company, participating respondents. Noting the
LD Products, patents in the order will not expire until after
Linkyo Corp., 2027, the commission notified U.S. Customs
Katun Corp., and Border Protection (CBP) that a GEO
Nano Pacific Corp., had been issued in the Canon investigation
Nectron Corp., prohibiting imports of products covered by
Ninestar companies, the patents.
Onlinetechstores.com,
Print-Rite companies,
Printronic Corp.,
Seine companies,
Shenzhen ASTA Official
Consumable Corp.,
The Supplies Guys,
Union Technology International,
Zinyaw
Continued next page

Most recent
action
Mar. 2015 Seine (Holland) District Court European May 2014 Canon sued the Seine/Ninestar group of
of The Hague patent companies’ overseas European sales firm,
(Netherlands) 2 087 407 claiming it marketed toner compatible with
Canon and HP cartridges that infringe
European patent number 2 087 407. This
dispute was resolved in March 2015 as part
of a broader settlement agreement between
Canon and Ninestar.
Feb. 2015 X-com shop Moscow City Russian Aug. 2014 This was Canon’s first suit in Russia
Economic Patent involving the dongle gear. Canon alleged
Court 2467370 that the distributor sold patent-infringing
(Russia) cartridges under the Cactus and G&G
brands on its website, www.xcom-shop.ru.
In less than a year, the defendant settled
with the OEM.
Feb. 2015 European Cartridge Warehouse High Court European July 2014 This was the first of Canon’s dongle gear
Limited, of Justice of patent suits in the UK. In February 2015, Canon
Printer Supplies Technology England and 2 087 407 announced it had obtained a default
Limited Wales (UK) judgment against both companies in which
the defendants were enjoined from selling
the patent-infringing toner cartridges and all
patent-infringing inventory had to be turned
over or destroyed.
Dec. 2014 Aster Technology Holland District Court European Apr. 2014 The Aster suit was one of the first filed by
of The Hague patent Canon in Europe involving the infringement
(Netherlands) 2 087 407 of a European patent on gears used
in Canon and HP toner cartridges. In
December 2015, Aster settled with Canon in
various courts worldwide.
Dec. 2014 Aster Graphics, Paris First European May 2014 Canon’s suit before the Paris First Instance
(Aster) Zephyr SAS Instance patent Court against Aster and Zephyr SAS was the
Unknown Court 2 087 407 first Canon case we know of in France. Aster
(Zephyr) (France) was named in various cases worldwide and
settled with Canon. The ultimate resolution of
the Zephyr case is not known.
Pending KMP PrintTechnik AG, District Court European May 2014 German press reports indicate KMP and
wta Carsten Weser GmbH of Düsseldorf patent wta appealed to the Supreme Court after
(Germany) 2 087 407 Düsseldorf court found in favor of Canon.
Continued next page
Most recent
action
Unknown Armor SA, District Court European Dec. 2014 Canon sued several of Europe’s best-
Artech GmbH, of Düsseldorf patent known third-party supplies companies in
and Pelikan Vertriebsgesellschaft (Germany) 2 087 407 Germany. The OEM filed complaints against
(and other Pelikan companies) the French third-party supplies vendor
Armor and its German manufacturing
subsidiary Artech along with Pelikan
Vertriebsgesellschaft, a subsidiary of
Pelikan International based in Hanover,
Germany, as well as other Pelikan
subsidiaries. Armor vowed to fight the case
but we are not aware of the firm issuing
any additional statements about the case’s
outcome and neither did Canon.
1
Full U.S. patent numbers: 8,135,304, 2
Full U.S. patent numbers: 8,135,304, 3
Full U.S. patent numbers:
8,280,278, 8,369,744, 8,433,219, 8,565,640, 8,280,278, 8,369,744, 8,565,640, 8,630,564, 8,280,278, 8,630,564, 8,676,090, 8,682,215,
8,630,564, 8,437,669, 8,494,411, 8,676,085, 8,676,085, 8,676,090, 8,682,215, and and 8,688,008
8,676,090, 8,682,215, and 8,688,008 8,688,008
About Actionable Actionable Intelligence is the leading source for news, analysis, and research on the digital
printer and MFP industry and the original and third-party consumables business. Actionable
Intelligence Intelligence provides clients with customized research and consulting, as well as up-to-date
news and strategic analysis on Action-Intell.com, the industry’s leading destination site visited
by tens of thousands of printer and supplies executives worldwide. Global printer OEMs,
third-party supplies vendors, distributors, resellers, and a diverse mix of other companies rely
on Actionable Intelligence to deliver timely and accurate information about the trends shaping
the printer hardware and supplies markets. To learn more about Actionable Intelligence, visit
www.action-intell.com.

Actionable Intelligence - Canon IP Report

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Actionable Intelligence - Canon IP Report

Uploaded by

Copyright:

Available Formats

Around the World,

Canon Cracks Down on

Legal Disclaimer Copyright © Actionable Intelligence, 2017. All Rights Reserved.

Continued next page

Continued next page

Continued next page

Continued next page

You might also like