July 12, 2017
Epson has taken two companies to court in a bid to clamp down on alleged violations of patents for its ink cartridges. Prinko Image Co. and Soldcrazy USA, both of California, were accused of importing and selling cartridges that infringe Epson’s patents.
The two patents – US6,502,917 and US8,794,749 – were originally issued to Epson by the United States Patent and Trademark Office in 2003 and 2014 respectively, with a re-examination certificate for the former being issued in 2009. Tigran Guledjan and Richard H. Doss, of Quin, Emanuel, Urquhart & Sullivan LLP, Los Angeles, attorneys for Epson, argued that not only were both patents infringed, by both companies but were done so willfully and with full awareness of the patent.
The matter first came to Epson’s attention when representatives of the company discovered cartridges for sale online advertised as being compatible with Epson printers. Soldcrazy, (operating online as Lovetoners) both through their own website and other online retailers such as Amazon.com and Walmart.com, offered ink cartridges listed as compatible with at least ten models of Epson printer, including the Stylus range and many of the WorkForce models. Likewise, Prinko, using many of the same retail websites but operating online as O’Image, sold Prinko-branded cartridges specifically advertised as being compatible with various Epson Stylus printers, including the Photo 1400 and the Artisan 1430.
Both Soldcrazy and Prinko had been subject to Seizure and Forfeiture Orders from the United States International Trade Commission in the past. The ITC had ordered, in June 2015 (in the case of Soldcrazy) and in June 2016 (in the case of Prinko), that “ink cartridges and components thereof that are imported in violation of the general exclusion order […] are to be seized and forfeited to the United States.” These were imposed following the US Bureau of Customs and Border Protection previously issuing General Exclusion Orders to both companies, even going so far as to deny ink cartridges that contravened these orders entry into the country. Despite these Orders being imposed, Soldcrazy and Prinko continued to supply the offending cartridges online.
As part of the case built against the two companies, Epson’s attorneys tested cartridges representative of all those sold by Soldcrazy and Prinko, in order to illuminate the exact similarities and therefore the likely patent infringement. Such claims, originally patented by Epson, include the design of the ink supply port, the semiconductor storage device, and the plurality of contacts for connecting the semiconductor with the printing apparatus. These comparisons proved to Epson’s attorneys that the infringement of the patents was both literal and willful.
It is not the first time in recent months that Epson have been forced to file actions against infringements of its patents. Between November 2016 and March 2017, eight separate actions were filed in the Central District of California, whilst another five were filed in the District Court of Oregon between February and June 2012. Of these earlier actions, all five also concerned the patent US6,502,917.
In both cases heard by the District Court, Epson’s attorneys have requested a trial by jury of all issues so triable, and demand that both defendants (Soldcrazy and Prinko) be permanently enjoined from continued infringement. They also seek damages from both Soldcrazy and Prinko, adding that the damages be trebled and paid together with any interest accrued on them, as well as asking that Epson be awarded its costs, attorney fees and litigation expenses.
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