Canon Announces Handful of Amazon Cartridge Removals in Canada and Big Slew in UK

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On September 18, Canon Inc. put out three press releases about the removal of patent-infringing toner cartridges from Amazon. The printer maker announced the removal of one Amazon Standard Identification Number (ASIN) sold in Canada by Gotoners, five ASINs sold in Canada by TUCAN INKS, and a whopping 62 ASINS sold in the United Kingdom by Ciberorg Ltd.

Since September 7, 2018, when Canon first began announcing the removal of infringing toner cartridges from Amazon sites, the OEM has issued 115 press releases about removing specific Amazon sellers’ listings, plus three announcements about total takedowns in France; the United States; and Germany, Italy, Spain, and the United Kingdom (see “Canon Announces 35 Toner Cartridge Removals from Amazon France” and “Canon Announces Amazon Takedown Totals Plus Some New Removals”). Over time, Canon’s campaign to protect the patents it holds on toner cartridges from infringement by Amazon sellers has expanded to include seven countries (Canada, France, Germany, Italy, Spain, the United Kingdom, and the United States), hundreds of sellers, and well over a thousand ASINs successfully removed. Essentially all the aftermarket toner cartridges removed to date have been new-build compatible toner cartridges designed to replace original cartridges used in HP LaserJet printers and MFPs, which Canon manufactures for HP Inc.

Actionable Intelligence periodically publishes free, downloadable reports that summarize Canon’s Amazon activity. For the latest, see “Canon Gets Amazon to Pull Huge Number of Aftermarket Toner Cartridges.” Actionable Intelligence will continue to track the sellers, patents, ASINs, and cartridge models involved in each takedown Canon announces. However, because our tables tracking this data have become increasingly long, we will no longer publish these tables with each and every article about Canon’s Amazon activity and instead will reserve these tables for our periodic reports.

Removals from Amazon Canada

Canon’s focus on Amazon.ca (Amazon Canada) is relatively recent. The OEM first announced a takedown from Amazon Canada in May (see “Canon Announces Toner Takedowns from Amazon Canada and UK”). Including the announcements issued on September 18, Canon has issued 10 press releases about its activity to protect its toner cartridge patents from infringement on Amazon.ca.

On September 18, Canon announced that it had filed an infringement report with Amazon.ca requesting the removal of certain toner cartridges sold by Gotoners. The seller page on Amazon.ca for Gotoners, which is also sometimes capitalized GoToners, exhibits the usual lack of detail we see about Amazon sellers in North America, including only the seller’s vow of high standards of customer service and its 98 percent positive rating. The firm’s storefront includes printer supplies featuring GoToners, Gotoners, InkSpire, C1, and Pantum branding. Gotoners operates its own retail website (https://gotoners.com). The firm’s website states:

At Gotoners, we go to work every day to offer Canada with the best imaging supplies with the most affordable pricing. Hopefully prevent awkward situations where you have to spend $200 on cartridges for your $99 printer.

The Gotoners trademark was issued in 2018. The applicant was Yizheng Li of Markham, Ontario, Canada.

Canon says it infringement report alleged that certain model CC530A, CC531A, CC532A ,and CC533A toner cartridges sold by Gotoners via Amazon.ca infringed Canon’s Canadian patent number 2,635,791. The HP 304A-series toner cartridges (CC530A, CC531A, CC533A, CC532A) are used in the Color LaserJet CP2020/CP2025 series and Color Laser CM2320 series from 2008. Canon’s Canadian patent 2,635,791 is the only one we have seen the firm employ so far to effect takedowns in Canada. It is part of a broader family of patents that Canon holds on toner cartridges featuring a pair of protrusions that are moveable between a projected position and a stand-by position and that control how the developer roller contacts with and separates from the cartridge’s photosensitive drum. Other patents in this family that Canon has been asserting include European Patent  EP 1 977 289 (’289) (see “Canon Announces Settlement with J&H Greentech in Germany”), as well as U.S. patent numbers  8,588,646 B2 (‘646), 7,869,740 B2 (‘740), 8,165,494 B2 (‘494), 8,971,760 B2 (’760),  9,494,916 B2 (‘916), 9,857,763 B2 (‘763), and 10,162,304 B2 (‘304) (see “Canon Files Patent-Infringement Lawsuit against V4INK,” “Canon Files Patent-Infringement Suit against LD Products,” and “Canon Amends Lawsuit against LD Products”). The sole ASIN sold by Gotoners that Canon asked Amazon.ca to remove was B07N825YWG.

On September 18, Canon issued a separate press release saying it filed an infringement report with Amazon.ca seeking the removal of certain toner cartridges sold by TUCAN INKS. TUCAN INKS’ seller page on Amazon.ca is similar to that for Gotoners in that it only vows the “highest” standard of customer service and displays its customer rating, although in TUCAN INKS’ case this included the ratings of a mere 16 customers. The seller’s storefront on Amazon.ca is small, including only 33 items as of the time of writing—all of them third-party ink or toner cartridges. That is all we were able to find out about this particular Amazon seller.

Canon says its infringement report with Amazon.ca sought the removal of five ASINs sold by TUCAN INKS, including B07HGLGM4X, B07HGJZMZF, B07HGL1X8R, B07HGKHQ2H, and B07HGK6L5V. These were replacements for the HP 125A-series toner cartridges (CB540A, CB541A, CB542A, CB543A) used in HP Color LaserJet CP1215, CP1510, CP1515, CP1518ni, CM1312, and CM1313. Canon’s infringement report alleged that the products sold by TUCAN INKS infringed the same Canadian patent described above.

Canon says that after it filed its infringement reports with Amazon.ca about the ASINs sold by Gotoners and TUCAN INKS, the online marketplace removed the above identified listings.

Canon concludes the press releases with its standard verbiage:

Filing an infringement report with Amazon.ca is a service offered by Amazon and does not constitute an official finding of infringement. The decision to take down a product is in the discretion of Amazon and is based on information provided by Canon.

Throughout the development, sales, and marketing process, Canon respects the intellectual property of others and expects others to similarly respect Canon’s intellectual property rights. Canon remains committed to pursuing legal enforcement against those who do not respect Canon’s intellectual property.

Takedown from Amazon.co.uk

Also on September 18, Canon issued a press release about a patent-infringement report it filed with Amazon.co.uk (Amazon UK) about certain toner cartridges sold by Ciberorg Ltd. According to the UK’s Companies House service, Ciberorg is based in Manchester, England, and was incorporated in 2009. Ciberorg operates its own retail website called CiberDirect (https://ciberdirect.co.uk/). According to seller information on Amazon.co.uk, Ciberorg sells its products on Amazon under the dame Ciberdirect. The Ciberdirect storefront on Amazon UK includes a variety of aftermarket consumables sold under the firm’s own brand.

Canon’s report to Amazon.co.uk asserted that certain cartridges sold by Ciberorg that were designed to replace the HP 304A-series toner cartridges (CC530A, CC531A, CC533A, CC532A) infringed claims 1 and 2 of the UK portion of Canon’s European Patent EP 1 977 289 (’289). This is the European equivalent of the Canadian patent discussed above.

Canon accused a total of 62 ASINs sold by Ciberorg of infringing EP ‘289 in its report infringement forms filed with Amazon.co.uk. These ASINs included B005J4ODAU, B005J4OEAY, B005J4OE54, B005J4OE18, B005J4ODW8, B005J4ODRS, B005J4ODN2, B005J4ODK0, B005J4ODF0, B005J4OD3C, B005J4OCYW, B005J4OCRE, B005J4OCM4, B005J4OCII, B005J4OCF6, B005J4OC6K, B005J4ODHI, B005J4ODCS, B005J4OD9Q, B005J4OD4G, B005J4OD0K, B005J4OCUQ, B005J4OCQ0, B005J4OCLK, B005J4OC4W, B005J4OBYS, B005J4OBTI, B005J4OBQ6, B005J4OBKW, B005J4OBJ8, B005J4OBFW, B005J4OB4I, B00OA3FU58, B00OA3F8SM, B00OA3FMB0, B00OA3G1EC, B00OA3FYWC, B00OA3FWBK, B00OA3FTHW, B00OA3FPA8, B00OA3FGMK, B00OA3FJVS, B00OA3ETE6, B00OA3EQBW, B00OA3ENEM, B00OA3EKAO, B00OA3EGY4, B00OA3EDN8, B00OA3EA36, B00OA3E6YY, B01BSOUTMU, B01BSOUOLG, B01BSOUSCG, B01BSOUR4K, B01BSOUQ2S, B01BSOUP0Q, B01BSOUNRQ, B01BSOUMK4, B01BSOUJ8O, B01BSOUI12, B01BSOUH04, and B01BSOUFVK.

Canon says Amazon took down all these products. The OEM adds, “These products are compatible with the aforementioned OEM HP cartridge models and provide inter alia a non-OEM housing and a non-OEM force receiving device according to claim 1 of EP ‘289. Furthermore, they comprise an elastic portion according to claim 2 of EP ‘289.”

Canon concludes by stating what it does in almost every one of its European-focused press releases about Amazon:

Filing a Report Infringement Form with Amazon is a service offered by Amazon and does not comprise any official finding of validity or infringement of a patent. The decision to take down a product is in the discretion of Amazon and is based on information provided by Canon. Amazon informed the vendor about the takedown and the vendor may object to it.

The announcement about Ciberorg is one of the biggest batch of cartridge removals we have seen Canon announce to date. Over one year into Canon’s public campaign to remove infringing cartridges from Amazon, it seems there is no shortage of infringing toner cartridge for Canon to report.

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