On November 12, 2020, The High Court of Australia announced its decision, in favor of Calidad Pty Ltd over Epson based on the rulings on “exhaustion of rights”.
In the original case, Epson sued Calidad for infringing Epson patents and trademarks and violating Australia’s importation statutes. Calidad imported and sold remanufactured inkjet cartridges for Epson hardware made by Ninestar. During this long running lawsuit, Ninestar has always legally support Calidad.
Ninestar’s legal team said, “Ninestar was aware of the severity of patent issues in the Australian market, as with other global markets, and strictly followed recycling processes and techniques that would be compliant with local laws. Further, we designed our own patented wafers to replace that of the OEM’s. From the perspective of recycling laws as well as intellectual property rights, Ninestar’s remanufactured products legitimately do not infringe the OEM’s patents. In spite of all this, we still got sued by the OEM in Australia. After five long years of litigation, and persistently defending our partner at each level of the courts in Australia, Ninestar finally won and received the recognition from the High Court. It is worth emphasizing again, that the wafers used to replace Epson’s as part of the remanufacturing process, must be patented and not allowed to fall into the protection range of the OEM’s complex patent portfolio. The OEM has a pool of patents in its wafers covering communication protocol between the chip and the printer, methodology of chip data reading and writing, chip data storage structure, etc. The OEM also filed lawsuit against third parties for protecting some of above patents in other countries. The application of non-patented wafer amid remanufacturing process in Australia or any other major continents will be highly likely subject to the OEM's litigation.”
Over the past two decades, Ninestar has built its reputation and been widely recognized as the major innovator and leader in the aftermarket industry. We respect IP rights of others and we also request ours to be respected. To take actions and assert IP rights will become one of the priorities of Ninestar legal department in the next couple of years. At same time and like always, Ninestar will continue to devote in technology innovation and quality improvement to bring customers the best products and service.