Lexmark v. Universal Imaging Industries — 11-Patent Toner Cartridge Dispute Dismissed With Prejudice
Lexmark International filed suit against Universal Imaging Industries in Florida’s Middle District, asserting 11 patents covering toner cartridge microchip and authentication technology. After nearly 5.7 years of litigation, the parties jointly stipulated to dismissal with prejudice in January 2024, each bearing their own costs.
5.7-Year toner cartridge IP battle ends in mutual walk-away
On April 30, 2018, Lexmark International, Inc. filed a declaratory judgement action against Universal Imaging Industries, LLC (UII) in the U.S. District Court for the Middle District of Florida. The complaint implicated 11 U.S. patents directed at toner cartridge microchip authentication and printer communication technology, spanning Lexmark’s E26x/36x/46x, T65x, C54x, MS31x/41x/51x/61x, and MS71x/81x laser printer families. UII was alleged to supply compatible or counterfeit toner cartridges and the microchips embedded within them.
The case closed on January 2, 2024, when both parties filed a stipulated dismissal under Fed. R. Civ. P. 41(a)(1)(A)(ii), disposing of all claims, counterclaims, and defenses with prejudice. Each side agreed to bear its own attorneys’ fees and costs, leaving no monetary award on the record. Dismissal with prejudice constitutes a final adjudication on the merits, extinguishing Lexmark’s right to re-assert the same 11 patents against UII on the same facts.
A duration of 2,073 days is notably protracted even for complex multi-patent litigation. The length suggests the case survived early dispositive motions and likely traversed claim construction proceedings before the parties reached resolution. The public record does not disclose settlement consideration, licensing terms, or product design changes — the stipulation is silent on commercial arrangements, which is consistent with a confidential settlement preceding the formal dismissal filing.
Filing to dismissal in 2073 days
2,073 days — nearly 5.7 years, well above average for multi-patent district court IP cases
Stipulated dismissal with prejudice — what it means for Lexmark and UII
Rule 41(a)(1)(A)(ii): Stipulated dismissal by both parties
Fed. R. Civ. P. 41(a)(1)(A)(ii) permits dismissal without a court order when all appearing parties sign the stipulation. Because both Lexmark and UII executed the filing, no judicial approval was required. This mechanism is routinely used to formalise a privately negotiated resolution while keeping commercial terms off the public docket.
Mutual consent — no court order neededWith prejudice bars Lexmark from re-asserting these claims against UII
Dismissal with prejudice operates as a final judgment on the merits under res judicata principles. Lexmark cannot re-file the same 11 patent claims against UII based on the same accused products or conduct. This is a meaningful concession by a patent holder — it differs sharply from a dismissal without prejudice, which would preserve the right to refile.
Res judicata — claims extinguishedEach party bears own costs — no fee-shifting under § 285
The stipulation explicitly allocates costs to each party individually, waiving any claim under 35 U.S.C. § 285 (exceptional case fee-shifting) or Rule 54(d). After 2,073 days of litigation, both sides absorbing their own fees suggests neither party secured — or could credibly claim — a dominant litigation posture sufficient to justify a fee motion.
No § 285 fee awardStipulation is silent on licensing, royalties, or product changes
The public court record discloses no settlement agreement, licence grant, royalty rate, or product design undertaking. This silence is consistent with standard practice: substantive commercial terms are embedded in a private settlement agreement filed under seal or not filed at all. Whether UII obtained a licence to the 11 patents, agreed to cease certain activities, or reached a purely financial settlement remains unknown.
Settlement terms undisclosedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Lexmark International, Inc. | Company | Global imaging technology company — holder of US9400764B2 and 10 further toner cartridge patentsSearch in Eureka ↗ |
| Defendant | Universal Imaging Industries, LLC | Company | Compatible and remanufactured toner cartridge supplier serving multiple OEM printer brandsSearch in Eureka ↗ |
| Plaintiff counsel | Audra C. Eidem Heinze | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Bonnie C. Daboll | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Christopher B. Roth | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Christopher J. Galfano | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | David Stephen Johnson | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Jason S. Shull | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Michael Joseph Harris | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Scott William Anderson | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Timothy C. Meece | Attorney | Counsel for Lexmark International, Inc.Search in Eureka ↗ |
| Defendant counsel | Brian R. Gilchrist | Attorney | Counsel for Universal Imaging Industries, LLCSearch in Eureka ↗ |
| Defendant counsel | Ryan Thomas Santurri | Attorney | Counsel for Universal Imaging Industries, LLCSearch in Eureka ↗ |
| Defendant counsel | Trevor Frederick Ward | Attorney | Counsel for Universal Imaging Industries, LLCSearch in Eureka ↗ |
| Defendant counsel | Woodrow Heath Pollack | Attorney | Counsel for Universal Imaging Industries, LLCSearch in Eureka ↗ |
| Presiding judge | Judge / | Chief Judge | Florida Middle District Court — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The stipulation invokes Rule 41(a)(1)(A)(ii) and explicitly names all claims, counterclaims, and defenses as dismissed — leaving no live issue before the court. The with-prejudice designation and mutual cost-bearing clause are the two operative terms. Together they suggest both parties concluded that continued litigation cost exceeded recoverable value, and that neither side held a position strong enough to demand fee-shifting or a court-imposed outcome.
US9400764B2 and 10 further patents — toner cartridge microchip authentication
The 11 asserted patents span application filings from approximately 2007 through 2015, collectively covering the technical interface between Lexmark laser printers and their toner cartridges — specifically the microchip embedded in each cartridge that authenticates the supply unit and governs printer communication. These patents sit within the competitive moat Lexmark has constructed around its E26x, T65x, C54x, and MS/MX printer families, where cartridge authentication directly determines whether third-party supplies can function in OEM hardware.
For the compatible and remanufactured cartridge industry, this portfolio represents a layered enforcement risk: each patent covers a distinct aspect of chip-printer interaction, making a single design-around insufficient to clear all 11. Lexmark has historically been one of the most active patent enforcers in the printer consumables sector, and this portfolio — spanning over a decade of filings — suggests continued relevance across current and next-generation device lines. Competitors supplying cartridges for any of the named printer families should treat these patents as live enforcement risks regardless of this case’s resolution.
Should you run an FTO against Lexmark’s toner cartridge microchip patents?
Any company manufacturing, importing, or selling compatible toner cartridges for Lexmark E26x, T65x, C54x, MS31x/41x/51x/61x, or MS71x/81x laser printers should assess exposure against all 11 patents asserted in this case. The dismissal with prejudice binds only UII — it does not affect Lexmark’s ability to assert the same patents against other suppliers. Companies supplying OEM-branded cartridges under Burroughs, Dell, IBM/Ricoh, Lenovo, Okidata, Toshiba, or Unisys labels for Lexmark-based hardware face equivalent risk.
PatSnap Eureka’s FTO Search Agent can map each of the 11 patent claim sets against your cartridge chip architecture, flag independent claims most likely to read on current microchip designs, and identify prior art that may support IPR or ex parte reexamination petitions. Claim monitoring alerts will notify your team if Lexmark files continuation applications that extend this portfolio’s coverage — critical intelligence for product planning cycles in the consumables market.
Run a freedom-to-operate analysis on US9400764B2 to assess your product’s exposure
Run FTO in Eureka →Similar toner cartridge and printer consumables patent cases
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What this case signals for the printer consumables IP landscape
Eleven patents, five-plus years, zero public verdict — this resolution pattern carries real intelligence for compatible cartridge makers and OEM IP teams.
OEM microchip patents remain a credible enforcement lever against compatible suppliers
Lexmark’s decision to assert 11 patents simultaneously signals a portfolio enforcement strategy designed to maximise licensing pressure. Compatible and remanufactured cartridge suppliers operating across multiple Lexmark printer families should treat each microchip authentication patent as an independent infringement vector — a single design-around may not extinguish all exposure.
Extended duration suggests claim construction complexity, not just delay
Cases involving toner cartridge chip communication protocols regularly produce contested Markman hearings. A 2,073-day lifespan is consistent with a protracted claim construction process followed by a settlement that became commercially rational once both sides had clarity on claim scope. Teams monitoring similar disputes should track Markman order dates as a leading indicator of resolution timing.
Lexmark v Universal — key questions answered
Lexmark asserted 11 U.S. patents: US9400764B2, US9176921B2, US8850079B2, US9837136B2, US9335698B2, US7844786B2, US8966193B2, US9245591B2, US7551859B2, US8386657B2, and US8225021B2. These patents collectively cover toner cartridge microchip authentication and printer-cartridge communication technology across multiple Lexmark laser printer families.
The parties filed a joint stipulation of dismissal under Fed. R. Civ. P. 41(a)(1)(A)(ii), agreeing to dismiss all claims, counterclaims, and defenses with prejudice. The public record does not disclose the underlying commercial terms. With-prejudice dismissal following 2,073 days of litigation typically suggests the parties reached a private resolution — possibly a licence or product arrangement — that made continued litigation commercially irrational.
No. A dismissal with prejudice under Rule 41 binds only the named parties — Lexmark and UII. Lexmark retains full rights to assert all 11 patents against any other manufacturer or supplier of compatible toner cartridges for the accused printer families. Companies supplying cartridges for Lexmark E26x, T65x, C54x, or MS/MX families should independently assess their freedom to operate.
The accused products included toner cartridges and microchips designed to function with Lexmark laser printers in the E26x/36x/46x, T65x, C54x, MS31x/41x/51x/61x, and MS71x/81x families. UII’s products were also alleged to be sold under OEM-branded labels including Burroughs, Dell, IBM/Ricoh, Lenovo, Okidata, Olivetti, Sindoh, Source Technologies, Standard Register, Toshiba, and Unisys.
The case ran for 2,073 days — approximately 5.7 years — from filing on April 30, 2018 to closure on January 2, 2024. This duration is notably long even for complex multi-patent litigation and suggests the case progressed through substantive proceedings, likely including claim construction, before the parties reached a resolution. The extended timeline is consistent with heavily contested toner cartridge microchip patent disputes.
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