CIS and AIJ respond to Epson’s allegation
July 4, 2019
Epson filed a patent infringement complaint in the US District Court for the Northern District of Illinois, Eastern Division in September 2018, alleging patent infringement by the two companies.
Epson filed the complaint on 27 September 2018, alleging infringement of its ‘917, ‘749 and ‘116 US patents by two Illinois-based companies, CIS Systems, Inc. (CIS) and Absolute Inkjet Incorporated (AIJ).
The products concerned in this case are aftermarket ink cartridges for use in Epson printers.
As explained in the court documents at the time, two general exclusion orders had previously been issued by the ITC, prohibiting the importation of ink cartridges that infringe Epson’s patents. Figures working in the aftermarket industry “know that importation and sale of ink cartridges for use with Epson printers may violate” these general exclusion orders.
Epson also stated that it gave notice of its patents “by virtual marking of its cartridges”.
The OEM said at the time that it is bringing this action “to recover money damages, for a preliminary and permanent injunction, and for other relief”.
Defendants CIS Systems, Inc., Absolute Inkjet Incorporated, Anthony K. Martin and
Joseph J. Ascaridis now filed a “their answer and additional defences” and at the same time filed a motion to stay “this patent-infringement case pending resolution of Seiko Epson Corporation et al v. STS Refill Technology, LLC et al, 9:18-cv-81723 (“the STS case”), a related case against Defendants’ supplier that is ongoing in the District Court for the Southern District of Florida.”
The court documents seen by The Recycler show that CIS Systems was voluntarily dissolved in 2018 and describes Absolute Inkjet Incorporated (AIJ) only acted as the business of marketing and selling ink for CIS Systems. With that in mind, the case states that “AIJ relies on third parties to design, develop, and manufacture the ink cartridges it sells.”
The defense also argues that “all accused wide-format compatible cartridges are purchased from the STS Defendants, and only from the STS Defendants” and “the accused desktop ink
cartridges are part of a kit which contains four bottles of ink and four empty desk top cartridges.” The argument states: “Defendants only made one sale of the accused desktop ink cartridges, and that sale was to Epson itself.”
The motion to stay is asking that “a patent case should proceed against the manufacturer, not the customer,” in this case the still ongoing STS v Epson case and argues: “This action should be stayed, in its entirety, pending resolution of the STS case. The substantial overlap between the present case and the STS case warrants application of the customer-suit exception. Defendants distribute and resell the accused wide-format compatible cartridges supplied by the STS Defendants (Martin Decl., ¶ 10-11), and the accused wide-format
compatible cartridges are currently at issue in the STS case.”
“Additionally, the present case cannot be effectively resolved while the STS case remains
pending. For example, if the STS Defendants negotiate a license to Epson’s patents, then Epson would be barred from asserting infringement against the accused wide-format compatible cartridges supplied to Defendants by the STS Defendants,” the defence adds.
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