Static Control Gains a Battle Victory in Their War With Lexmark
Late last month, the Sixth Circuit Court of Appeals ruled to reverse the previous dismissal of Static Control’s counterclaims against OEM giant, Lexmark.
Static Control has been battling Lexmark in some manner for the past 10 years, when Lexmark initiated a suit against the company for alleged copyright violations. Static Control responded with counterclaims under federal and state antitrust law and false-advertising law.
Jump forward two years to 2004, and the court ruled that Static Control had not, in fact, induced patent infringement, and also remarked that Lexmark had in fact misused it patents. Static Control’s counterclaims were also simultaneously dismissed.
Fast forward ever further, to today, and the District Court’s most recent proceedings in this case resulted in a reversal of the initial dismissal saying that Static Control’s claims should not have been dismissed under either the Lanham Act or state law.
Website Practical Law notes that the one reason for the decision of the court was Static Control’s ability to show that they had a “‘cognizable interest in its business reputation and sales to remanufacturers” and “that its interests were harmed by Lexmark’s statements to the remanufacturers that Static Control was engaging in illegal conduct, namely, patent infringement’”
The Sixth Circuit court wrote in their latest document that “‘Lexmark does not attempt to dispute any of these materials facts, arguing instead that Static Control should have presented more evidence…’” They conclude that the initial counterclaims were incorrectly dismissed and that they “‘remand for further proceedings on these claims’”.
Static Control is quick to point out that this is not the first time that the Sixth Court of Appeals has ruled for the components specialist. In an earlier case, described as a “pinnacle decision”, the court reversed a trial verdict which had held that it was not possible for the Digital Millennium Copyright Act (DMCA) to be used as a defense or rationale for a manufacturer when the purpose of the chip is to prevent communication with a printer.
