Color Imaging/GPI Delts Another Blow, No More Excuses, Time For GPI To Pay Canon $4.4Mln. For Fake Toner. Canon's $4.4M Win In Toner Patent Case Left Untouched By Steven Trader Additional reporting by Melissa Daniels. Editing by Adam LoBelia.
Law360, New York (November 14, 2017, 6:14 PM EST) — A Georgia federal judge on Tuesday let stand a $4.4 million verdict against a toner company and plastic manufacturer accused by Canon Inc. of violating its ink toner bottle patent, saying the jury’s infringement findings and damage award were reasonably supported by the evidence.
Despite arguing “everything but the kitchen sink to persuade the court to reverse, vacate or modify” the federal jury’s June verdict, Color Imaging Inc. and General Plastic Industrial Co. Ltd. were unable to persuade U.S. District Judge Amy Totenberg that no reasonable jury could have found that they directly and willfully infringed Canon’s patent or induced and contributed to infringement.
Instead, Judge Totenberg pointed out that Canon presented evidence that the companies continued to sell their ink toner bottles after learning of both Canon’s patent and Canon’s claim that the bottles were infringing.
“This same evidence and more was sufficient for the jury to find that defendants willfully infringed the patent without a good-faith belief of non-infringement,” the judge wrote.
Color Imaging and General Plastic had also taken issue with the testimony of one Canon expert, saying there was no way the jury could have found infringement based on his statements about their toner bottle. But the jury had much more to go off of than that evidence alone, Judge Totenberg pointed out.
“With or without [the expert’s] testimony, the jury had sufficient evidence to find that the Type B bottles met all the elements of the asserted claims, based on the court’s construction of the claim language as well as the jury’s own examination of the Type B bottles and how they worked in the Canon copiers,” the judge wrote.
The companies had also requested tossing the jury’s verdict or convening a new trial because, they said, the jury’s damage award was excessive and exceeded their current revenues.
But “case law shows that the jury or the court is not bound by defendants’ profit margin when determining royalty rate per bottle, since the court may also consider the profits that plaintiff stood to lose in such a hypothetical negotiation,” Judge Totenberg wrote, denying the motions.
After a two-week trial in June, a Georgia federal jury found that Color Imaging and General Plastic had both willfully infringed a Canon patent for ink toner bottles used in replacement products for copiers and printers, and awarded damages commensurate with a $12 royalty rate per empty bottle.
General Plastic must pay more than $3.74 million, while Color Imaging must pay more than $730,000, according to the jury’s verdict. The jury found both companies directly infringed the three asserted claims of Canon’s patent, as well inducing and contributing to infringement, and that Canon proved the infringement was willful.
Canon sued in 2011, accusing the companies of making and selling replacement toner bottle products for Canon imageRunner copiers. General Plastic, which owns stock in Color Imaging, supplied the empty bottles that Color Imaging then filled, packaged and warehoused, the suit says.
Color Imaging sells both empty toner bottles and finished products, Canon’s amended complaint said, and the defendants marketed their products as a cheaper alternative to those sold under the Canon brand.
The defendants denied any direct infringement, or that they induced or contributed to infringement of the asserted patent claims, according to court records.
The defendants also said Canon couldn’t stop them from selling their toner bottles, because the copiers are made in such a way that incorporates essential features of its patent, and Canon tells its customers that it must replace their toner bottles to keep the copiers functioning, according to court records.
“The jury’s findings were entirely consistent with the law and the evidence presented at trial, and Canon is pleased that the court has sustained the verdict in all respects,” Canon lead attorney Michael Sandonato told Law360.
Counsel for Color Imaging and General Plastic on Tuesday did not immediately return a request for comment.
The patent-in-suit is U.S. Patent Number 7,467,012.
Canon Inc. is represented by Michael P. Sandonato, Nicholas M. Cannella, Peter Shapiro, Dennis J. McMahon, Erin J.D. Austin, Edmund J. Haughey and Chitra M. Kalyanaraman of Fitzpatrick Cella Harper & Scinto, and George L. Murphy Jr. and Audra A. Dial of Kilpatrick Townsend & Stockton LLP.
Color Imaging and General Plastic Industrial are represented by Bryan G. Harrison, Tim Tingkang Xia, Rory Radding, Joseph A. Farco and H. Straat Tenney of Locke Lord LLP.
The case is Canon Inc. v. Color Imaging Inc. et al., case number 1:11-cv-03855, in the U.S. District Court for the Northern District of Georgia.