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Defeating Strong OEMs Wielding Weak Patents

4 Dec, 2014 By: Art Diamond

I think it’s time to take a hard look at the strategy that some OEMs have been using to intimidate respondents in a campaign of patent infringement lawsuits. How many aftermarket players have fallen victim to this strategy of shock and coercion that OEMs have employed by exercising their legitimate patent rights while banking upon their massive financial resources to press for claims to be allowed and to overwhelm the alleged infringer.

Several experts in this industry have expressed concern over the allowance of patent claims on so-called inventions that upon close examination appear to be simply design changes that lack the spark of innovation. Do these minor changes rise to the level of invention? In my view, many do not. Of course the problem is, “Who among the thousands of cartridge rechargers has the wherewithal to engage the OEM in court and fight a sustained battle involving costly experts and high ticket attorneys?”

The answer is: few to none. Indeed, many rechargers have been forced to close up shop rather than engage in battle with a formidable foe.

Most of the respondents, financially ill-equipped to do battle with the giant patent holder, come to terms by signing consent decrees or stipulations, agreeing to cease and desist making, using, selling, or offering for sale, the patent violating products.

These patent bullying strategies surely have had a negative impact on the market share rechargers battled for and captured but now see slipping away. The OEM may claim, righteously, that it respects and honors the intellectual property rights of others and expects the same veneration from its competitors. But does the OEM respect the rights of the recharger operating a legitimate business and offering the consumer a cost saving option? I think not! This is an existential question that involves the ethical use vs. abuse of patent law.

The problem, in my opinion, lies with the inability of the cartridge reman industry to unite, organize an association that combines its resources, and takes a stand against the weakest weapon (read patent) being deployed against its members. Patent invalidation is not easily accomplished, but it can be done.

An Example:

On June 25, 2014, the USPTO issued a Memorandum to the Patent Examining Corps containing new instructions for analyzing patent claims “with abstract ideas.” This directive comes as a consequence of the U.S. Supreme Court’s unanimous decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. The Alice Corp. case focuses on the ineligibility of subject matter containing abstract ideas to qualify for patentable claims. And while it concerns patent invalidation, Alice Corp. apparently does not relate to any OEM legal action regarding patent violation currently pending against a cartridge remanufacturer.

Turning the calendar back to the early 1990s, I recall our meetings with representatives of the automobile parts aftermarket and its powerful associations. These groups served as a model for cartridge rechargers, but somehow their assistance, their guidance and their advice has all gone astray.

Rechargers, in the United States certainly, are in dire need of a champion, an advocate, a defender to unite their fellow aftermarket players and build a war chest to fund defensive measures especially against allegations of infringement involving a weak patent having claims that might be declared invalid.

Art Diamond is a contributing editor for Recycling Times, and is a veteran of the imaging industry who launched Toner Conference 31 years ago. He will assist as co-chair of the Las Vegas RT Imaging Summit & Expo. Diamond is known internationally as a consulting chemical engineer, holds 15 US imaging patents, and authored the “Handbook of Imaging Materials.”

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