Greentrees International responds to Canon case

August 28, 2014
The UK-based company has commented on being named by the OEM in its newest IP case in the UK.
The OEM named Badger Office Supplies Ltd. and Inkjet Direct Ltd. alongside Greentrees International for infringement of its EU patent named in a number of other EU-based cases this year, with the action commencing today at the High Court of Justice of England and Wales for infringement of Canon’s patent EP 2 087 407 “by, inter alia, the importation, manufacture and sale of certain toner cartridges for use in various models of Canon and Hewlett-Packard laser beam printers”. The OEM noted that it is seeking “various remedies including an injunction and damages”.
Greentrees International’s statement read as follows: “Today Canon announced legal action against GTI for the infringement of its 407 gear/dongle patent. GTI has been in discussion with Canon for some time to try and resolve this matter in a friendly and reasonable way. GTI fully respects OEM patents.
“Canon understands that GTI has only ever made one sale (four units) of the relevant toners and that was to Canon. These remanufactured toners used the OEM gear and dongle. Canon believes that any remanufactured toners reusing OEM components infringe its 407 patent. In trying to settle this matter Canon insisted that GTI needs to agree that the mere act of assembling an OEM toner infringes its patents, even if each separate component did not infringe its patents.
“GTI has asked Canon to clarify at what point it regards a remanufactured toner to infringe its patents. It asked Canon: ‘Please clarify the level of permitted repair to an OEM empty before it infringes (in your view) the 407 patent. Here are a number of possible scenarios. Please advise whether you regard each as infringing the 407 patent or not. For all options assume the waste hopper is emptied and the hopper cleaned/refilled with new toner.

1. No replacement of any parts.
2. Replacement of a minor part e.g. magnetic roller or wiper blade.
3. Replacement of OPC fitted with a new gear/coupling which avoids infringing the 407 patent
4. Fit OEM gear/coupling from that empty (not another empty) onto a new OPC and the new combined part then assembled into the empty.
5. 2 and 3 together.
6. 2 and 4 together.’

“Canon has been unwilling to answer these questions. We feel it is in the interests of the global remanufacturing community to seek clarity as to the rules regarding remanufactured cartridges. Having only ever made one sale of these cartridges, GTI has stopped sales of the six relevant products without agreeing that it has infringed the 407 patent. GTI continues to respect OEM patents.”

Source: The Recycler