Industry Veteran Comments on Canon Lawsuit

Industry veteran Steve Weedon, CEO of Discover Imaging Products Ltd., has shared his observation on the latest Canon lawsuit which accused 18 aftermarket suppliers of infringing its nine patents.

Canon is a $40 billion global company that is ranked 3rd in US Patents registered in 2013. They have not been out of top 10 in last 28 years. Patents are usually filed more to protect against being locked out of a new innovative technology, but what is the use of going to all the expense of gaining a patent if not prepared to defend it. The aftermarket has given good reason for Canon to defend their patents. Many would have thought the 2012 Canon/ International Trade Commission (ITC) action that led to a General Exclusion Order in June 2013, would have been enough of a warning for all to take Canon patents seriously. But alas it seems not the case.

Whilst it can be understood that remanufacturers who buy and use the OPC drums, probably are not aware of patents that exist on gears and coupling devices, the OPC manufacturers, gear manufacturers and the distributors absolutely know all about it. So these companies make a conscious decision to make and offer infringing products that they know infringe. All manufacturers of drums have done. No single OPC maker has offered an alternative non-infringing drum, until after the OEM has sued their customers.

In the latest law suit the patents concern the so called “dongle gear” (a rotational coupling device design) to drive the cartridge. The drum gear and dongle are on the cartridge. So it is on the used cartridge when empty for the remanufacturer to reuse.

The “dongle” is easily removed to enable reuse. It is attached to the drive gear of the drum by a snap in pin. The drum gear can be removed and reused. So for genuine cartridge remanufacturers the gear and dongle can be reused. This would require the OPC maker to make a drum with only an end cap on one end. To date no OPC is offering a drum like this. Of course for new built cartridges a new gear and dongle is required. Here an alternative non infringing design will be offered.

The industry has become apathetic towards IP. Many advertise their IP strength but those same companies are the first to offer an non infringing gear/dongle once the OEM has sued. Why do they not offer a non infringing one to start with? It comes down to money. Designing a work around takes ingenuity and time but money is needed to develop the gears (and dongle) and there is always the risk that the OEM does not sue in which case money is wasted. It is always easier to sell a product if it is the same as the OEM. In future remanufacturers are going to be asking a lot more questions to their suppliers about OEM patents. They of course want full indemnities from the suppliers, who will not give them. Somehow the makers and distributors need to meet the needs of remanufacturers in providing products that do not “knowingly” infringe since it seems only they are being litigated against. Somehow remanufacturers need to be more aware of OEM patents on parts and supplies being used, and demand drums with no gears so they can use a previously used OEM gear. That is called recycling, which is what this industry is meant to be about.