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Pressure continues on Amazon and in courts

June 6, 2019

Canon requests removal of toner cartridges offered by Laser Tek Services, Inc. and True Color Toner from Amazon.com, LPC Società a Responsabilià Limitata Semplificata from Amazon.it and announces conclusion of dispute with 5-Sterne Handel UG.

Canon Inc. announced the filing of an infringement report with Amazon.com seeking removal of Amazon.com listings for certain toner cartridges sold by Laser Tek Services, Inc. for use in HP laser beam printers.

Canon’s infringement report alleged that certain model HP 126A toner cartridges sold by Laser Tek Services, Inc. via Amazon.com infringed Canon’s U.S. Patent No. 8,688,008. Canon requested that Amazon remove Vision Supplies’ listings for those products, namely, Laser Tek Services, Inc.’ listings with Amazon Standard Identification Numbers (“ASINs”) B007W0A8TE, B00O852MHM, B00O852JY8, B00O852BSC, B00O852ENO, B00O852G14, B00O852H36, B00O852CU4 and B00O8528M6.

At the time of this announcement, the above-identified Laser Tek Services, Inc. listings were no longer available on Amazon.com.

Canon Inc. also announced the filing of Report Infringement Forms with Amazon.it based on the alleged use of claims 1 and 2 of the Italian portion of Canon’s European Patent EP 1 977 289 (“EP ‘289”) regarding the cartridge models “CB540A”, “CE320A”, “CF210A”, “CB541A”, “CE321A”, “CF211A”, “CB542A”, “CE322A”, “CF212A” and “CF210X” offered by LPC Società a Responsabilià Limitata Semplificata under the ASINs (Amazon Standard Identification Number) B00Z75R394, B00Z9U1J0Q, B00Z9ULGFO, B00Z74YJ38, B00Z764AJO, B00Z76CO0G, and B00Z9UYMNM. Afterwards, Amazon took down the respective products. These products are compatible with the OEM HP cartridge models CB540A, CE320A ,CF210A, CB541A, CE321A, CF211A, CB542A, CE322A, CF212A and CF210X, and provide inter alia a non-OEM housing and a non-OEM force receiving device according to claim 1 of EP ‘289. Furthermore, they comprise an elastic portion according to claim 2 of EP ‘289.

Also announced was the filing of an infringement report with Amazon.com seeking removal of Amazon.com listings for certain toner cartridges sold by True Color Toner for use in HP laser beam printers.

Canon’s infringement report alleged that certain model HP 126A toner cartridges sold by True Color Toner via Amazon.com infringed Canon’s U.S. Patent No. 8,688,008. Canon requested that Amazon remove True Color Toner’ listings for those products, namely, True Color Toner’ listings with Amazon Standard Identification Numbers (“ASINs”) B01N9KD575, B01NGYLKNF, B01N6JTWAK, B01N0TLQH7, B01MZ2R2XW, B01MZ2IVGP, B01MY17SYT, B01MT1TE7M, and B01N1V39OO.

At the time of this announcement, the above-identified True Color Toner listings were no longer available on Amazon.com.

Also active in the courts, Canon Inc. announced the conclusion of its patent dispute with 5-Sterne Handel UG.

The OEM and 5-Sterne Handel UG (limited liability), doing business as “Starlet24”, as well as its managing directors agreed to resolve their pending patent dispute by signing a settlement agreement. 5-Sterne Handel UG inter alia accepted a preliminary injunction of the District Court Düsseldorf based on the infringement of the German portion of Canon’s European Patent EP 2 087 407 B1 as final and binding between the parties.

Furthermore, 5-Sterne Handel UG has agreed to pay damages for past infringements to Canon. Further details of the settlement agreement are confidential.

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