Canon Asks Amazon to Remove Third-Party Toner Cartridges, Files New Lawsuit

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This month, Canon Inc. launched a bevy of initiatives targeting third-party toner cartridges sold in Spain, Germany,  and the U.K on Amazon. Canon also filed a patent-infringement lawsuit in the United States (see below). All of the third-party toner cartridges are designed for use with HP laser printers.

Requests Amazon to Remove Third-Party Toner Cartridges

  • On October 17th, Canon announced it had filed a Report Infringement Form with Amazon ES based on the alleged use of claim 1 and 25 of the Spanish portion of Canon’s European Patent EP 2 087 407 regarding the cartridge model “CF280A” offered by TINVEND S.L. under the ASINs (Amazon Standard Identification Number) B079HVW63P. Afterwards, Amazon took down the respective products. These products are compatible with HP toner-cartridge model CF280A and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.
  • On October 17th, Canon announced it had filed a Report Infringement Form with Amazon Germany based on the alleged use of claim 1 and 25 of the German portion of Canon’s European Patent EP 2 087 407 regarding the cartridge models “CE505A, CE505X, CF280A, CF280X” offered by Nixim Europe Limited (also known as TOP cartridge) under the ASINs (Amazon Standard Identification Numbers) B002VRH5ZI, B00BV9TUH8, B00BV9TV2M, B004WKKJLY. Afterwards, Amazon took down the respective products. These products are compatible with HP toner cartridge models CE505A, CE505X, CF280A, CF280X and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.
  • On October 11th, Canon announced it had filed a Report Infringement Form with Amazon UK-based on the alleged use of claim 1 and 25 of the UK portion of Canon’s European Patent EP 2 087 407 regarding the cartridge model “CF280A” offered by Just Ink Ltd. under the ASIN (Amazon Standard Identification Number) B073QZ51JX. Afterwards, Amazon took down the respective products. These products are compatible with the OEM HP cartridge model CF280A and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.
  • On October 11th, Canon  announced it had filed  a Report Infringement Form with Amazon UK-based on the alleged use of claim 1 and 25 of the UK portion of Canon’s European Patent EP 2 087 407 regarding the cartridge model “CE505X” offered by Workit Direct Ltd. under the ASIN (Amazon Standard Identification Number) B07B69CJZS. Afterwards, Amazon took down the respective products. These products are compatible with HP toner-cartridge model CE505X and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.
  • On October 11th, Canon announced it had filed a Report Infringement Form with Amazon UK-based on the alleged use of claim 1 and 25 of the UK portion of Canon’s European Patent EP 2 087 407 regarding the cartridge model “CE505X” offered by Workit Direct Ltd. under the ASIN (Amazon Standard Identification Number) B07B69CJZS. Afterwards, Amazon took down the respective products. These products are compatible with HP toner-cartridge model CE505X and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.
  • On October 10th, Canon announced it had filed a Report Infringement Form with Amazon UK-based on the alleged use of claim 1 and 25 of the UK portion of Canon’s European Patent EP 2 087 407 regarding the cartridge model “CF280A” offered by ImageStar Office Supplies under the ASINs (Amazon Standard Identification Number) B01AW4NUKA, B01HO4CZWU, B01HO4C06Q, B01HO4CWR8, and B01ACVOJ8A. Afterwards, Amazon took down the respective products. These products are compatible with HP toner-cartridge model CF280A and provide inter alia a non-OEM coupling member, a non-OEM drum as well as a non-OEM housing.

Canon noted that Filing a Report Infringement Form with Amazon is a service offered by Amazon and does not comprise any official finding of validity or infringement of a patent. The decision to take down a product is in the discretion of Amazon and is based on information provided by Canon. Amazon informed the vendors about the take-downs and that the vendors may object to it.

Do It Wiser Patent-Infringement Lawsuit

On October 17th, Canon also announced that it had filed a complaint in the U.S. District Court for the District of Delaware against Do It Wiser LLC, which also does business under the name “Image Toner,” for infringement of Canon’s U.S. Patent No. 9,581,958.

As set forth in the complaint, Do It Wiser sells toner cartridges that infringe Canon’s patent for use in various models of HP laser printers. Do It Wiser sells the infringing toner cartridges online, including through its websites doitwiser.com and imagetoner.com. Canon is seeking damages and injunctive relief.

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