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TONERHEAD & R.I.S. SETTLE PATENT-INFRINGEMENT LAWSUITS
TonerHead, owner of Ink-O-Dem, and Retail Inkjet Solutions (RIS) have reached a settlement agreement that puts to an end their patent-infringement claims against one another in a pair of lawsuits. The litigation began last year, when TonerHead filed suit against RIS, Costco (one of RIS’s biggest customers), and others in the U.S. District Court for the Northern District of Illinois, Eastern Division, and then RIS filed a separate patent-infringement complaint against TonerHead in the U.S. District Court for the Southern District of California. When we last wrote about this pair of lawsuits related to retail inkjet refilling equipment (see “TonerHead Sparks Legal Fracas in the Retail Inkjet Refilling Equipment Business”), there were indications that the two parties were working on a settlement agreement, and now it seems the firms were able to work out mutually agreeable terms. What those terms are is unclear, as the settlement agreement is confidential.
The settlement agreement puts to an end the lawsuit filed by RIS in California. However, TonerHead’s complaints against some of the other defendants named in its lawsuit are ongoing. We have not heard of any settlements related to the firm’s allegations against Phoenix Ink Corporation, Jewel Food Stores or Jewel-Osco, and OfficeMax. (Both retailers carry Phoenix Ink inkjet refilling equipment.) There has been an automatic stay in TonerHead’s legal proceedings against InkTec Zone America, as that firm has filed for bankruptcy protection (see “InkTec Zone America Files for Bankruptcy”).
According to a joint motion to dismiss all claims, counterclaims, and defenses pending between the parties, TonerHead, RIS, and Costco “have reached an agreement to resolve their dispute.” The confidential settlement agreement between RIS and TonerHead became effective on April 25, 2011. Each party agreed to bear its own costs and legal fees. The joint motion to dismiss RIS’s patent-infringement lawsuits against TonerHead contains nearly identical language.
On April 27, Judge John A. Houston for the U.S. District Court for the Southern District of California dismissed all claims, counterclaims, and defenses in RIS’s lawsuit against TonerHead. The very next day, Judge Charles R. Norgle, Sr., issued an order in the U.S. District Court for the Northern District of Illinois dismissing with prejudice TonerHead’s complaint against RIS and Costco, and the two defendants’ counterclaims. Both court orders stipulate that each party is responsible for its own costs and attorneys’ fees.
Because the settlement agreement is confidential, we can only guess at its terms. One possibility is that the two former adversaries agreed to some sort of technology-licensing agreement. If so, that makes the ultimate outcome of TonerHead’s complaint against Phoenix Ink, Jewel-Osco, and OfficeMax even more pertinent. The defendants in the TonerHead case asserted that TonerHead’s U.S. patent numbers 7,089,973 (the ‘973 patent) and 7,628,181 (the ‘181 patent), are invalid and unenforceable. We will continue to follow this case and will report back on developments related to TonerHead and the remaining defendants in its patent-infringement lawsuit.
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