HP TrueRes Technology at Center of Litigation

In the battle taking place in the litigation war between Xerox and HP, Xerox filed a counter suit July 19 against HP and Anderson Industries Inc. (doing business as Pioneer Cable Company) in U.S. District Court for the District of Kansas. In response to Xerox's suit, relating to the licensing of HP TrueRes technology, HP has issued a statement reiterating the facts of the matter to help others understand the issues involved in what may be a confusing legal situation.

The Facts as HP Sees Them:

  • Xerox is no longer a licensee of HP TrueRes technology because Xerox breached the HP TrueRes contract, despite many attempts at resolution offered by HP during the past nine months.
  • The HP TrueRes technology Xerox was using exists as an application specific integrated circuit (ASIC). Because of the contract violations, HP is no longer authorizing shipment of this ASIC to Xerox.
  • Lack of an HP TrueRes license allegedly threatens to shut down production of Xerox color printers currently using HP TrueRes. Because Xerox did not comply with reporting clauses in the HP TrueRes contract, HP does not know how many products are affected.
  • The termination of Xerox's license to HP TrueRes technology resulted after nine months of inquiries and discussions over the contractual breaches Xerox committed during the past several years.
  • Xerox contractual breaches included not paying royalties and refusing to comply with contractual reporting requirements.
  • During this period, HP attempted to establish discussions with Xerox. However, for months Xerox denied any need to talk about these issues.
  • HP sought to initiate a meeting of business managers to resolve the dispute pursuant to the terms of the contract, but Xerox did not respond within the required time period specified in the contract. HP subsequently terminated and commenced legal proceedings.
  • Audit costs were increased tremendously due to Xerox delays and lack of cooperation with auditors.
  • Continued shipment of Xerox products incorporating HP TrueRes, now that its license is terminated, constitutes willful patent infringement.
What the Facts Mean to HP
"Xerox has repeatedly said 'We don't need HP technology,'" said Carolyn Ticknor, president and chief executive officer of HP's LaserJet Imaging Systems. "Xerox's actions … indicate that they use, and need to license, HP printing and imaging technology. Regrettably, instead of working directly with us like our many technology customers, Xerox chose to work through the legal system."

In addition to this counter suit, HP and Xerox have four other patent-infringement cases pending between them. The first is a complaint brought by Xerox against HP relating to inkjet technology. The second case involves Xerox's infringement of HP patents relating to a touch-screen user interface. The third case is an infringement claim relating to HP Resolution Enhancement technology. The fourth case involves Xerox's infringement of HP inkjet technology patents.

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