04.16.19
In 2017 FUJIFILM Speciality Ink Systems Ltd (FSIS) filed suit against Nazdar Co., US and Nazdar Limited, UK as well as its German distributor Zaro GmbH before the competent Regional Court Düsseldorf (docket nos. 4b O 22/17 and 107/17).
FSIS claimed Nazdar had infringed its UV ink patents EP 1 803 784 B3 and EP 2 383 314 B3 in Germany by offering its 702 & 703 Series UV inkjet inks and declaring them to be chemically compatible with the original inks designed for Fujifilm’s Acuity range of flatbed UV printers.
The patents on these inks protect specific inkjet ink compositions providing a range of properties including improved flexibility, jetting performance and adhesion, according to FUJIFILM.
In reaction to the infringement actions, Nazdar filed nullity actions against the patents in Germany before the German Federal Patents Court and asked the Regional Court Düsseldorf to stay the infringement proceedings.
Furthermore, Nazdar contested infringement, but did also, in reaction to FSIS’ patent claims, change the chemical composition of its UV inkjet inks.
However, despite redesigning the inks, Nazdar continued to market its UV inkjet inks as 702 & 703 Series and failed to indicate to customers the change in chemical composition in a way that FSIS considered necessary to avoid patent infringement, per FUJIFILM.
With its judgments, the Regional Court in Düsseldorf has now confirmed infringement, injuncted Nazdar and Zaro from offering, bringing to market and any further use of patent-infringing UV inkjet inks. It has also sentenced them to pay damages and render account. The court also approved FSIS’s position that the change in chemical composition of the 702 & 703 Series is not sufficient to avoid infringement because Nazdar continues to market their UV inkjets inks as 702 & 703 Series without sufficient indication of the product change, per FUJIFILM.
Finally, while without prejudice of the nullity proceedings at the Federal Patents Court in Munich, the Regional Court in Düsseldorf did not follow Nazdar’s invalidity arguments and therefore also rejected the stay motion.
Nazdar/Zaro have filed appeals against the judgments. Irrespectively, the judgments remain provisionally enforceable under the condition that FSIS will provide sufficient enforcement security. A date for the appeal hearing has been set for Nov. 7, 2019. A date for a hearing in the nullity proceedings has not yet been set.
"This sends a clear message to anyone thinking of infringing our intellectual property. We will continue to protect our investment by filing patents that cover our technology and we will take appropriate action against those who infringe," said Rob Fassam, R&D director at FSIS.
