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US Supreme Court takes up Lexmark patent suit

Brett Barrouquere, Associated Press

LOUISVILLE, Ky. (AP) -- The U.S. Supreme Court agreed Monday to step into a long-running dispute between printer maker Lexmark International Inc. and a company that refurbishes and resells ink cartridges.

The legal battle between Lexington, Ky.-based Lexmark and Static Control Components of Sanford, N.C., centers on microchips placed inside toner cartridges by Lexmark. The high court's decision to take the case keeps alive efforts by Lexmark to have a challenge to its patent on the microchips tossed out.

"We believe that the original dismissal of Static Control's claim by the Lexington Federal District Court was correct and are pleased to have the U.S. Supreme Court address this important legal question," Bob Patton, Lexmark's vice president, general counsel and secretary, said in a statement.

A message left for a spokesman for Static Control was not immediately returned Monday afternoon.

The two companies have been battling for more than a decade over Lexmark's use of microchips in ink toner cartridges. Lexmark began placing the chips in toner cartridges in 2002 in an effort to stop companies such as Static Control from refilling the cartridges and reselling them to Lexmark customers.

Lexmark eventually changed its chips in an effort to thwart other companies from refurbishing the toner cartridges. The chips were assigned to certain cartridges and printers, preventing for a while refurbished cartridges from working with some printers. Static Control modified its methods and kept selling refurbished toner cartridges to Lexmark customers.

Static Control eventually won the 2002 case. Static Control sued Lexmark again in 2004, seeking a ruling that its modified chips did not violate Lexmark's copyright. Lexmark countersued Static Control, alleging patent infringement by the North Carolina company.

A judge dismissed Static Control's allegations that Lexmark's patents were invalid and that the company misused them. The U.S. 6th Circuit Court of Appeals in March 2012 reinstated Static Control's patent allegations against Lexmark.

Lexmark didn't dispute many of the facts in the lawsuit. Instead, the company argued that Static Control should have provided more evidence that Lexmark's patents were invalid.

Judge Karen Nelson Moore wrote for the court in sending the case back for trial that Lexmark failed to make a convincing case that its patents were valid and that Static Control violated its rights.

"Although we make all inferences in favor of Lexmark on this issue, Static Control has demonstrated by undisputed clear and convincing evidence that the design patents were invalid," Moore wrote.

Lexmark appealed that decision to reinstate a trademark infringement lawsuit brought by Static Control against Lexmark.


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