By Ed Avis
Memjet and Hewlett-Packard reached a settlement in their 11-month-old patent disagreement on June 30. The settlement alleviates the concern that either HP’s PageWide technology or Memjet’s single-pass inkjet head technology would be changed or removed from the market.
“Memjet and HP Inc. have reached a global settlement that includes the dismissal of all current actions between the parties and a cross-license,” a statement from Memjet read. “The terms of the settlement are confidential.”
Memjet CEO Len Lauer commented in the statement: “We are pleased to have reached a settlement with HP. We will continue to stay focused on creating innovative printing technology that enables our customers to realize optimal speeds, quality and costs.”
When asked for details, specifically about how the settlement might affect the technology or cooperation between HP and Memjet, Kevin Shimamoto, general manager of Memjet Wide Format, replied, “Sorry, but there is no other information we can provide.”
HP did not issue a press release about the situation, and when asked about it, PageWide XL Business Development Manager Jamie Sirois replied: “HP is not able to discuss next steps at this time.”
The case was playing out in three courts: the U.S. federal courts in the California Southern District and the Oregon District, and the Munich District Court in Germany. The latest filings in the docket for the case were on June 24 in the California Southern District and June 28 for the Oregon District.
However, the fact that the statement said that a “global settlement” has been reached implies that all the cases will conclude. The concept of “cross-licensing” means that the two parties presumably agree to allow each other to use the related technologies they respectively own, presumably relieving any concerns dealers or users may have had that one or the other technology would change.
The case began on August 11, 2015, when Memjet filed suit in the California Southern District, claiming that HP violated its patents for wide-format, single-pass inkjet printing technology. HP filed a countersuit about six weeks later, claiming that Memjet had violated its patents.
The action then moved to Germany, where Memjet filed suit in November. The German patent courts are much speedier than the U.S. courts – they immediately filed a temporary injunction that shut down sales and marketing of PageWide in Germany. That injunction was reversed 10 weeks later, but it highlighted the potential long-term effect of the suit.
In the U.S. courts, the battle was moving towards a “Markman hearing,” which is a court event at which the parties discuss the meaning of the narratives in the patents. Markman hearings, also called “claim construction hearings,” can bring a case to a settlement, if one side or the other determines that the case is not moving in the desired direction. The Markman hearing was originally scheduled for June 6, but court documents show that it had been reset twice, first to June 23 and then to July 21. Both parties had already filed their Markman briefs, including dozens of exhibits on each side.
A “sigh of relief”
With the settlement, presumably the fight is over. Achim Carius, managing director of motio, the German reprographics association, summed it up in his e-newsletter article about the settlement: “Users of HP PageWide large-format printers can now breathe a sigh of relief, as the threat of renewed sales ban in Germany has ended.”
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