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Lexmark Forced to Settle Patent Dispute with Ortiz & Associates, and Will Probably Pay Up.
Lexmark, a leading provider of printing and imaging solutions, has reached a settlement agreement with Ortiz & Associates Consulting, a patent-licensing company, over a long-running patent dispute. The settlement resolves a lawsuit filed by Ortiz in 2022, accusing Lexmark of infringing two patents related to printer consumables management.
The patents, U.S. Patent Nos. 6,838,998 and 7,109,671, cover methods and systems for measuring the amount of toner or ink remaining in a cartridge, and adjusting the print quality accordingly. Ortiz claims that these patents are essential for complying with the ISO/IEC 19752 and 19798 standards, which specify the methods for determining the yield of toner and ink cartridges. Ortiz alleges that Lexmark and other printer makers have infringed its patents by using these standards in their products and marketing materials.
Lexmark has denied any wrongdoing and has challenged the validity and enforceability of the patents. Lexmark has also filed petitions for inter partes review (IPR) with the U.S. Patent and Trademark Office (USPTO), seeking to invalidate the patents. However, in January 2024, Lexmark and Ortiz informed the court that they were in the process of finalizing a settlement agreement and asked to stay all deadlines in the case.
The terms of the settlement have not been disclosed, but according to a research firm covering the markets for home and office imaging hardware and supplies, Lexmark may have agreed to pay Ortiz a royalty fee to license the patents. The settlement also means that Lexmark will withdraw its IPR petitions, and Ortiz will drop its patent-infringement complaint against Lexmark.
The settlement does not affect Ortiz’s other lawsuits against Konica Minolta, Ricoh, and Epson, which are still pending in the same court. Ortiz is seeking damages and injunctive relief from these defendants, as well as a declaration that they are infringing its patents. Ortiz has also indicated that it may sue other printer makers that use the ISO/IEC standards in the future.
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