Static Control Components, Inc. v. Lexmark International, Inc.
2012 U.S. App. LEXIS 18316
6th Cir.2012Background
- Lexmark manufactures laser printers and uses microchips in cartridges; remanufacturers refurbish Lexmark cartridges using Static Control components.
- Lexmark's Prebate program offered discounts conditioned on a license to remanufacture or recycle, allegedly restricting competition.
- Static Control developed microchips to replace Lexmark's, enabling remanufacturing and sale of cartridges that Lexmark claimed infringed its IP.
- Litigation began in 2002 (02 Action) for copyright violations; Static Control counterclaimed antitrust and false advertising; later 04 Action sought declaratory judgment on redesigned chips.
- Jury trial concluded with no direct infringement by Static Control’s customers as a class; Static Control was found to have misused patents as an equitable defense.
- The Sixth Circuit affirmed dismissal of some federal antitrust claims, but reversed on Lanham Act and certain North Carolina state-law claims, remanding for further proceedings; design patents were found invalid.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction over patent counterclaims | Lexmark argues exclusive Federal Circuit jurisdiction applies. | Static Control contends jurisdiction under 28 U.S.C. §1291 is proper. | Jurisdiction lies under §1291; not exclusively Federal Circuit. |
| Antitrust standing for Prebate-related claims | Static Control lacks standing to sue under antitrust laws for Prebate effects. | Lexmark contends Static Control has standing as an indirect victim. | Static Control lacks antitrust standing for Prebate-related injuries. |
| Lanham Act standing | Static Control seeks relief for false advertising affecting its business reputation. | Lexmark argues lack of standing under antitrust principles should carry to Lanham Act. | Static Control has Lanham Act standing; keep/ reinstate Lanham Act claim. |
| North Carolina state-law standing | Static Control should be allowed to pursue NCUDTPA claims as a supplier. | North Carolina law tracks federal AGC factors for standing. | North Carolina would permit standing for suppliers; remand on state-law claims. |
| Validity of Lexmark design patents | Lexmark's design patents are valid and enforceable. | Static Control asserts design patents are invalid as primarily functional. | Design patents invalid; affirmed. |
Key Cases Cited
- Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002) (exclusive jurisdiction inquiry discussed in patent context)
- First National Bank of Pulaski v. Curry, 301 F.3d 456 (6th Cir. 2002) (establishing standing principles and jurisdictional considerations)
- Crimpers Promotions, Inc. v. HBO, 724 F.2d 290 (2d Cir. 1983) (standing when injury is intertwined with antitrust violation)
- Teague v. Bayer AG, 671 S.E.2d 550 (N.C. Ct. App. 2009) (North Carolina antitrust standing standards and AGC factors)
- Hyde v. Abbott Labs., Inc., 473 S.E.2d 680 (N.C. Ct. App.) (historic discussion of state standing rules pre-Illinois Brick)