Fitzpatrick Secures Jury Verdict for Canon

June 26, 2017


Linda Ficano
Fitzpatrick, Cella, Harper & Scinto
(212) 218-2284

Fitzpatrick Secures Jury Verdict for Canon In Toner Bottle Case

New York, NYJune 26, 2017—Following a ten-day jury trial, Fitzpatrick, Cella, Harper & Scinto secured a verdict that two defendants had willfully infringed a Canon patent on its innovative toner bottle technology. With damages findings of $3.7 million against one defendant and $700,000 against the other, the federal jury in Atlanta awarded Canon all of its requested damages. The jury also rejected the defendants’ affirmative defenses of exhaustion, implied license and permissible repair.

“Canon is very pleased that the jury has awarded it the full measure of damages sought,” said Michael Sandonato, partner at Fitzpatrick and lead trial counsel for Canon in the dispute. “We hope that this verdict will serve as a reminder to the aftermarket industry that Canon’s patents must be respected by those selling toner bottles and toner cartridges for Canon copiers and printers.”

One of the two associated defendants, General Plastic Industrial Co. Ltd., manufactured and sold the empty toner bottles, while the second, Color Imaging Inc., filled the bottles and sold them for use in Canon’s imageRUNNER® copy machines. The jury found for Canon on all issues, including direct infringement, induced infringement, contributory infringement and willful infringement—the last three of which required a showing of intent on the part of the defendants. The jury also found, in rejecting the defendants’ affirmative defenses, that Canon had not given up its patent rights when it sold its copy machines.

The case, which had been pending for six years, culminated in a two-week trial. Previously, Fitzpatrick’s legal team secured a summary judgment ruling in favor of Canon on the validity of the patent at issue.

The Fitzpatrick trial team included Michael Sandonato, Edmund Haughey, Peter Shapiro, Dennis McMahon, Erin J.D. Austin and Chitra Kalyanaraman. The case, Canon, Inc. v. Color Imaging, Inc. et al., was tried in the United States District Court for the Northern District of Georgia.

About Fitzpatrick, Cella, Harper & Scinto:

At Fitzpatrick, Cella, Harper & Scinto (, IP is not just a practice area – it is the firm’s sole focus. Founded in 1971, Fitzpatrick is a leading national intellectual property law firm with offices in New York, Costa Mesa, California, and Washington, D.C. It has one of the premier patent litigation and prosecution practices, which covers the spectrum of intellectual property services, including applying for patent and trademark protection, litigation in U.S. district courts and the International Trade Commission, appeals, interferences, post-grant patent challenges (e.g., IPRs), alternative dispute resolution, licensing, opinions, corporate transactions, and due diligence. Fitzpatrick represents an international client base from Fortune 500 companies to start-up companies.