The latest in Lexmark’s UII lawsuit

April 17, 2019

Following Lexmark’s complaint of patent infringement in May 2018 against Universal Imaging Industries LLC (UII), further legal developments have arisen over the past few weeks.

Legal documents viewed by The Recycler reveal that UII filed a Motion and Memorandum to dismiss the complaint on 28 March 2019 with the United States District Court for the Middle District of Florida Tampa Division.

In these documents UII describes Lexmark’s lawsuit as part of a greater effort by OEMs to “lock out the aftermarket with firmware traps” and “dubious lawsuits, such as this.”

UII is cited as an aftermarket company operated by Steven Miller, who has “obtained dozens of patents on various aspects of printer cartridges, many cross-licensed with Lexmark, with an emphasis on inventions that would permit a single cartridge to be used across many models of printers.” Miller is described as “a strong advocate for fair competition among OEMs and aftermarket companies.”

The documents go on to declare, in a Factual Background section, that Lexmark was bought out in 2016 by Apex Technology of China (Apex China), the “biggest direct competitor” to UII. Apex China then offered to buy out UII but was refused; the documents state that Apex China then “threatened to sue UII for patent infringement” regarding its Lexmark-compatible MX and MS chips, which duly took place.

UII’s Motion explains that the Amended Complaint alleges “a variety of different theories of infringement of different patents and newly-added declaratory judgement counts against UII patents.” However, declares the Motion, at least two of these asserted patents “lay claim to well-known abstract ideas, seeking patent protection solely because the ideas are implemented by general purpose computer components, rendering them invalid”; the Motion then goes into great detail explaining this.

UII also asserts that “the remaining counts of the suit should be dismissed.”

UII’s Motion states that the plaintiff’s amended complaint “fails to allege sufficient facts to state a plausible claim for direct or wilful infringement.” The complaint is also described as “an impermissible shotgun pleading.”

As a result, “UII respectfully requests that this Court dismiss the Plaintiff’s Amended Complaint and grant such other and further relief the Court deems just and appropriate.”

Last week, on 11 April 2019, Lexmark issued a response in opposition to UII’s Motion to Dismiss. In legal documents viewed by The Recycler, the OEM asserts that UII “took advantage of Lexmark’s patented technology for its own gain” and labels UII’s Motion to Dismiss as “nothing more than a thinly-veiled attempt by UII to interject its own self-serving narrative.” It also describes the Factual Background section of UII’s Motion, containing the explanation about Apex China, as full of “irrelevant, unsupported attorney argument and attacks”.

The documents then go on to refute each aspect of the Motion, including UII’s assertion that two of the patents involved in Lexmark’s Complaint are invalid and that the Complaint is “shotgun pleading.”

The documents also state that, even if UII is successful in challenging a single patent claim in the two patents it says are invalid, “this case will move forward as to all ten patents” as UII has not challenged the remaining patent claims involved.

The documents go on to discuss patent eligibility analysis and describes UII’s argument regarding two of the patents as being “premised on mischaracterisation of the patent claims and the law.”

Lexmark also declares that UII’s Motion “relies solely on attorney argument, which cannot meet its burden” and says that its own Amended Complaint “provides allegations to support its claims for indirect and wilful infringement.”

The OEM also states that its Complaint is “properly pleaded.”

Lexmark concludes by requesting that the Court deny UII’s Motion to Dismiss the Amended Complaint brought against it.