Ricoh Settles with Penovia over Remote Printer-Monitoring Patent-Infringement Allegations

scales of justice 2 Law360 reports that Ricoh U.S.A.has reached a settlement with a patent-holding company Penovia LLC to resolve Penovia’s allegations that Ricoh infringed its patent for technology used to remotely monitor printers and MFPs, a Texas federal judge said October 29th. Penovia has also filed suit against nine other printer companies, several of which have also settled (see below).

Ricoh is the sixth electronics manufacturer to strike an agreement with Penovia over the patent-infringement allegations. Penovia hit nine printer manufacturers, including Canon U.S.A., and Lexmark International with patent-infringement suits in May 2013 accusing them of infringing U.S. Patent Number 5,822,221. The case is Penovia LLC v. Ricoh USA Inc., case number 2:13-cv-00425, in the U.S. District Court for the Eastern District of Texas.

U.S. District Judge Rodney Gilstrap dismissed the case with prejudice, following an undisclosed agreement between Ricoh and Penovia announced in September that settled accusations similar to those Penovia lodged against Xerox, Samsung Electronics Americas, Epson America, and others.

Penovia released the following statement: “Penovia and (Ricoh) have agreed to a settlement of this case and have executed a written agreement.”

Penovia says the printer companies all illegally used Penovia’s technology for wirelessly transmitting messages to and receiving communications from printers and MFPs, for instance, for current device status, such as current ink or toner levels. Among the printers and MFPs that it alleged illegally used the technology are Samsung’s ML-2525W wireless printer, Ricoh’s Aficio SP6330N printer, and Xerox Phaser 6360 laser printer.

Penovia says the technology was patented in October 1998, and that it acquired the patent from inventor Frank Groenteman  after he allowed it to expire because he was unable to pay the maintenance fee for it. Penovia sought damages from the nine printer manufacturers for their sales of accused products between May 2007 and when inventor Groenteman allowed the patent to lapse on November 8, 2010.

According to Law360, the case against Samsung was dismissed in mid-September 2013 after Samsung said on August 1st that it had reached a settlement with the patent owner. Xerox and Lexmark also settled with Penovia, which moved to dismiss the allegations against them on September 20th and 23rd respectively. OKI Data Americas also reached a settlement, while Penovia moved to dismiss the suit against Zebra Technologies in September.

Brother, Epson, and Canon Still Face Charges

Penovia’s patent-infringement claims against Brother International, Epson America, and Canon U.S.A. have not yet been settled.

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