HP announced late last year two settlement agreements that represent successful efforts to defend and protect its intellectual property (IP).
HP and Asia Pacific Microsystems, Inc. (APM) of Taiwan reached an amicable worldwide patent settlement to resolve ongoing patent litigation relating to HP’s inkjet print cartridges. As part of the settlement, APM, a subsidiary of Taiwan-based United Microelectronics Corporation, acknowledged manufacturing infringing print cartridge components for a variety of customers and took immediate steps to halt production of the infringing components. As a result, HP agreed to dismiss APM from a pending patent infringement case in federal court in California.
HP also reached a comprehensive settlement agreement with LD Products, Inc. of California, a prominent online seller of aftermarket cartridges, regarding allegations by HP with respect to the sale of misidentified ink and toner cartridges and infringing ink cartridges. As part of the settlement, LD Products has agreed to change its sales practices with regards to selling aftermarket cartridges for HP printers, and additionally has agreed to cease the sale of a range of infringing inkjet ink cartridges.
“HP has always put a high premium on R&D – investing in technology that improves the overall experience for our customers. We are committed to protecting our brand and our customers,” said Matt Barkley, program manager, Worldwide IP and Brand Protection, Printing and Supplies, HP. “In order to protect our innovations, the superior quality of our products, and by extension, our customers, we will continue to defend our IP.”
These settlements are representative of HP’s ongoing efforts to protect its IP, as well as ensure a fair and transparent marketplace. HP also has been involved in vigorous IP protection actions in Brazil, Poland and Spain, where ligation, settlements and regular monitoring are ongoing.
Details of the HP/Asia Pacific Microsystems settlement
The APM settlement is based on litigation filed by HP with the United States International Trade Commission (ITC) as well as in the California Federal District Court, alleging the sale and distribution of infringing inkjet print cartridges in the United States. The ITC ruled that the HP patents were valid and that APM was guilty of patent infringement as both a contributory infringer and by inducement.
The ITC also ruled that MicroJet Technology Co.—a subsidiary of Taiwan-based DB-Tel Incorporated and customer of APM—infringed HP’s patents in the manufacturing and/or sale of inkjet print cartridges. The ITC issued a General Exclusion Order (GEO) directing the U.S. Customs Service to exclude all infringing articles, without regard to source.
Details of the HP/LD Products settlement
HP took issue with LD Products for selling HP compatible clone cartridges labeled as “remanufactured” on both LD Product’s and third-party websites. After several requests to cease and desist, and involved discussions between the companies, HP filed litigation in the California Federal District Court alleging multiple illegal acts under the federal Lanham Act, which prohibits trademark infringement, trademark dilution and false advertising, as well as violation of California state law for unfair competition and false advertising.
As part of the settlement agreement, LD Products has agreed to a structured plan governing how it describes and sells newly built and remanufactured print cartridges, and to cease the practice of selling misidentified products. Additionally, LD Products has compensated HP for a portion of its legal costs.
The second part of the agreement resolved allegations of patent infringement by HP against LD Products for sales of infringing inkjet cartridges. LD Products admitted that the HP patents are valid and enforceable and has agreed to immediately cease the sale of the infringing products and destroy remaining infringing inventory.
As a result of the two agreements, HP and LD Products have agreed to dismiss the pending claims against one another before the US federal District Court in California.
(1) The settlement covers a number of cartridges, including HP 02, HP 81, HP 88, HP 564, HP 920, HP 932, HP 933, HP 940, HP 950, HP 951 and HP 970. In countries outside of the United States, these cartridges may be known by different product numbers.