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 user 2007-06-25 at 10:49:00 am Views: 42
  • #17966

    Lexmark loses verdict in patent case
    Lexmark International lost a court battle on Friday when a jury ruled that it failed to prove that Static Control Components induced toner-cartridge remanufacturers to violate Lexmark patents.Lexmark had alleged that Static Control, by making a chip that bypassed a Lexmark patent-enforcement mechanism, had encouraged some of its customers to directly infringe on Lexmark’s patents.And while Friday’s verdict in U.S. District Court was decidedly in Static Control’s favor, it does not nullify the Lexmark program at the center of the case. The judge in the case earlier ruled the program is valid, as well as ruling in Lexmark’s favor on several key issues before and during the trial.The verdict does not entitle Static Control to seek monetary relief from Lexmark. The company had initially sought damages by claiming Lexmark violated antitrust laws, but the judge threw that claim out.But Static Control used claims of anti-competitive measures by Lexmark as a defense in the case. The jury agreed, though that portion of its verdict is only an advisory for the judge, who will have the final say.

    Static Control hailed the jury’s verdict as a victory for the consumer.
    “I think this is a very pro-consumer, money-saving, economically sound decision for the American consumer,” said Static Control CEO Ed Swartz after hugging his general counsel Skip London. “This gives the consumer a choice he would not have, had Static Control not fought Lexmark.”

    Cartridges in crosshairs
    The 5-year-old case centers on toner cartridges for Lexmark’s laser printers. At the root of it is the Lexmark Return Program, which offers upfront discounts to toner cartridge buyers if they agree to return the cartridge after a single use to Lexmark and not other remanufacturers. Lexmark then remanufactures the cartridges and resells them.The presence of third-party remanufacturers has grown over the last decade, siphoning off profits from printer companies who rely on profit-rich ink and toner, since printers are often sold for little or no profit.The case between Lexmark and Static Control involves only laser-printer toner cartridges. The customers of the Return Program are generally large companies, which purchase the cartridges through contractual agreements.The case grew out of a past decision by Lexmark to include a chip on its Return Program toner cartridges that determined whether they had been remanufactured. If they had, the cartridge turned itself off and would not print.The legal battle began when Static Control developed a chip that turned off Lexmark’s, allowing remanufacturers to buy up empty Return Program toner cartridges, install Static Control’s chip and then resell them.The chip was one of thousands of products produced by Static Control, which helps remanufacturers repair toner cartridges and then resell them.

    Lexmark has said the chip violates the single-use patent license it includes on the Return Program cartridges. The company also offers non-Return Program cartridges that come with no license agreement and can be remanufactured by third parties if the customers wish.Since Friday’s verdict does not invalidate the Return Program, it “kind of maintains the status quo,” said Tom Carpenter, a vice president and senior equity analyst at Hilliard Lyons in Louisville. Carpenter’s firm or its affiliates beneficially owned at least 1 percent of Lexmark’s stock at the end of May.Charlie Brewer of industry tracker Lyra Research concurred that the ruling doesn’t change the remanufacturer landscape; however, “the aftermarket as an industry will feel re-energized after having lost a lot of high-stakes, high-visibility battles … over the years.”Brewer said the ruling also crowns Static Control “as the champion of the aftermarket.”“It re-establishes them as the company that stepped up to the plate and fought all the way,” he said.

    Result not one-sided
    The case was not a complete victory for Static Control, though, as Judge Gregory Van Tatenhove had ruled against it on several parts of the case before and during trial.For instance, Van Tatenhove found earlier this month that Static Control directly infringed on a Lexmark patent in the production of an encoder wheel used on the toner cartridges.The encoder wheel, as well as the chip, were prominently discussed in Lexmark’s closing arguments.Lexmark attorney Mark Banner said Static Control sold the two parts necessary to successfully remanufacture and sell a working Return Program cartridge.“They were selling everything you need as a remanufacturer to infringe,” he said. He went on to say that Static Control “knew or should have known” that the remanufacturers were infringing.In the course of the case, three major cartridge remanufacturers who were supplied by Static Control were found to have violated Lexmark’s patents. The three had made counter-claims against Lexmark but settled and admitted the validity of the company’s patents.Van Tatenhove also threw out Static Control’s claims that Lexmark violated antitrust laws with its Return Program.The North Carolina company used anti-competitive allegations, though, as part of its defense, and the jury in almost all cases agreed with Static Control.It agreed that Lexmark has market power in the aftermarket for its toner cartridges and has used it to unreasonably restrain competition.Static Control also alleged that Lexmark’s non-Return Program cartridge labels mislead consumers. Lexmark had rebutted that the labels were color-coded differently and included different part numbers. Still, the jury agreed, for the most part, with Static Control’s claims.

    The jury also agreed with Static Control’s claims that Lexmark improperly placed patent licenses on some toner cartridges it sold to IBM.Those parts of the verdict, though, are merely an advisory opinion to Van Tatenhove. Van Tatenhove asked the attorneys after the verdict was announced to file certain documents with the court on those advisory opinion issues within about a month. He will issue his decision sometime after that.Neither company made any immediate comment about appeals in the case, though London, of Static Control, said he suspects “there will be plenty of appeals.”

    Lexmark loses recycling ruling

    Federal jury rejects program
    In a victory for bargain recyclers of laser toner cartridges that could transform the business model for printers, a jury in Frankfort ruled yesterday that Lexmark International “unreasonably restrained competition” and exploited customers into believing that they had to pay more by recycling empty cartridges only through the Lexington company.At stake is the lifeblood of Static Control of Sanford, N.C., and about 3,500 U.S. firms that recycle and refill laser and inkjet cartridges, then sell them at prices up to 30 percent less than Lexmark does.
    The printer industry reaps profits from ink cartridges, not printers themselves.

    The jury’s ruling rebuked Lexmark labeling practices used since 1997 to entice customers to return empty cartridges to them instead of cheaper, alternative suppliers.The verdict by the nine-member jury is nonbinding, although U.S. District Court Judge Gregory Van Tatenhove said he will give it serious consideration when he makes his final ruling in 30 days.Basically they were saying that Lexmark was cheating their customers,” said Rob Enderle, an industry analyst and chief of the Enderle Group. “They want to see consumers get choice.”
    At issue is Lexmark’s “Prebate” or “Return” program, in which corporate customers received large discounts on their ink cartridges in exchange for a pledge to return the empties to Lexmark. A higher-priced cartridge that can be freely recycled is also available.

    The prebate cartridges included a chip that disabled the printer if a non-Lexmark recycled cartridge was inserted. But Static constructed a similar chip that allowed the recycling industry to continue refilling cartridges.
    Static’s lawyers argued that the prebate program was not only wasteful, because many cartridges ended up in the garbage, but also amounted to a monopolistic practice by Lexmark. The jury agreed as part of its 19-page verdict, but Van Tatenhove has ruled Static could not collect damages from Lexmark.”We’re very pleased and gratified,” said Static Control Chief Executive Ed Swartz. “I think this is a very pro-consumer … decision.”

    Lexmark, which receives 51 percent of its profits by recycling its own empties, will likely appeal the verdict.“Lexmark’s Return program benefits customers, is good for the environment and is fair to the competition,” Lexmark chief counsel Vincent J. Cole said. “We will continue to pursue claims whenever and wherever necessary to protect Lexmark’s intellectual property.”Jim Forrest, an analyst with Lyra Research in Boston, says toner cartridges generated more than $30 billion in revenues worldwide, with remanufactured versions accounting for nearly a quarter of that. Forrest said a Lexmark victory might have sparked other printer giants to create similar programs.Instead, the ruling threatens to change forever the razor and razor blade business model of the industry, where printers are sold at a discount and profits are made on the supplies, Enderle said. “This will have an awful lot to do with changing the market,” he said.

    Jury rules Lexmark patents not violated

    A federal jury determined yesterday that Lexmark’s patents weren’t violated by a North Carolina company that makes parts that lets the company’s printer-toner cartridges be reused.The jury found that the actions of Static Control Components of Sanford didn’t cause the makers of remanufactured cartridges to infringe on patents held by Lexmark.Lexmark had sued under federal copyright law after Static Control sold a microchip to the remanufacturers that allowed them to rebuild certain Lexmark cartridges, refill them with ink and sell them to customers for far less money.Although the verdict isn’t binding, Judge Gregory Van Tatenhove of U.S. District Court said he will give it serious consideration when he makes his final ruling within 30 days. Both sides could appeal.Van Tatenhove found earlier that Static Control did violate a Lexmark patent regarding another product, known as an encoder wheel. However, Static Control stopped producing the wheel in 2004, so no damages were awarded to Lexmark.The legal fight between the two companies dates back to 2002.The most recent trial dealt with a Lexmark program that allowed corporate customers large discounts on their ink cartridges in exchange for a pledge to return the empties to Lexmark. The “prebate” cartridges, as they were called, included a chip that blocked their reuse by anybody but Lexmark, but Static constructed a similar chip that allowed the cartridges to be duplicated.

    Lexmark also sold a more expensive non-prebate version that customers were free to sell to remanufacturers.
    Static Control’s attorneys argued that the program not only was wasteful, because many ended up in the garbage, but also amounted to a monopolistic practice. The jury agreed, but Van Tatenhove had previously ruled that Static couldn’t collect monetary damages from Lexmark because the remanufacturers, not Static Control, were harmed.