# no way to sell sublimation ink? (sawgrass patent issue)



## imakesubink (Jul 24, 2012)

Hi, All!

I am new sublimation ink manufacturer from Korea.

As I searched on the forum that

I can' sell my product to Europe & USA & Australia
due to SAWGRASS patent issue?

Is that only limiited to below 42" width printer or all format printer?

All I want to do is selling my good quality product to low price to you guys.

Hope you guys help me to find out the solution.


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## charles95405 (Feb 1, 2007)

you are fighting a losing battle...besides many of us have been duped because non sawgrass inks did not come with correct ICC profile for either the Epson or Ricoh printer....plus support is difficult just with email...and shipping costs can add up


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## imakesubink (Jul 24, 2012)

Dear charles,

We've done with compatibility test for Epson head and we have proper ICC profile. but not yet with Ricoh.

Shipping cost is not a big deal since our price is not exceed $35 per LITER.

For supporting matter, we are looking for solution.

got any idea about it?

appreciate your interest.


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## charles95405 (Feb 1, 2007)

Best solution is to find a sublimation knowledgeable independent operator in my country (usa)to be your support person. I leave salary issues for you.


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## imakesubink (Jul 24, 2012)

that could be one of solution, but can they beat SAWGRASS? 

let's see what others will say on this issue.

thanks


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## mgparrish (Jul 9, 2005)

imakesubink said:


> Hi, All!
> 
> I am new sublimation ink manufacturer from Korea.
> 
> ...


I marked up in your questions above.


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## imakesubink (Jul 24, 2012)

Dear mgparrish,

I surprised with your profound learning!

To conclude below your point,

if we want to sell less than 42" or above printer customer without infringe patent,we need to find the way to prove it,

otherwise 

we have to wait until 2014, am i getting right?
(do you have more detail about this proof?)

We have to pay 2Mil to be licensee of SAWGRASS to keep ongoing royalty rate as 5%.

I won't make sublimation ink if i had 2 Mil 

really appreciate your support.


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## mgparrish (Jul 9, 2005)

imakesubink said:


> Dear mgparrish,
> 
> I surprised with your profound learning!
> 
> ...


I marked up in your text above.


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## sublimeinfo (Sep 11, 2012)

Dear MG Parrish, 

I am having similar problem. I was wondering whetehr the chemical makeup of saw grass patents can be found anywere?

So we can dispute so long as chemical make ups are different?

Do they hold patent on the term sublimation too? can we not call it sumthing different? similar to sublimation ink.


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## mgparrish (Jul 9, 2005)

sublimeinfo said:


> Dear MG Parrish,
> 
> I am having similar problem. I was wondering whetehr the chemical makeup of saw grass patents can be found anywere?
> 
> ...


See my mark-ups I marked up in your comments above.


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## Riderz Ready (Sep 18, 2008)

What I cannot understand is if TOG won the patent lawsuit against Sawgrass why the flodgates did not open. Judges seldom like to go to trial on something that has already been decided in a court of law. 

Did TOG actually win the suit or did they settle the suit for $$$ in exchange for going away? Were the terms of the settlement ever made public or are they sealed?

Just does not make sense someone beat Sawgrass and won a patent suit and no one has used that ruling in selling to desktop market.


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## charles95405 (Feb 1, 2007)

TOG did not win or lose the lawsuit. the entire matter was settled out of court...end result, TOG stopped selling sublimation ink and 'sold' their customer base to Sawgrass who agreed to provide tech support for the TOG customers for a period of time. I know I received an email to that effect. I think...just my opinion... that TOG might have won but there was an issue of $$$ necessary to continue the fight. They apparently took some $$ in settlement and went away. They are apparently doing business selling LASER sublimation toner. the web site is Sublimation Toner They also have Sublimation Toner

Google TOG...there is a lot of information available..but bottom line they do not sell sublimation ink


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## mgparrish (Jul 9, 2005)

Riderz Ready said:


> What I cannot understand is if TOG won the patent lawsuit against Sawgrass why the flodgates did not open.
> 
> *TOG did not win the patent lawsuit against TOG, the lawsuit was dropped for $$$. *
> 
> ...


I marked up in your comments above.


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## mgparrish (Jul 9, 2005)

charles95405 said:


> TOG did not win or lose the lawsuit. the entire matter was settled out of court...end result, TOG stopped selling sublimation ink and 'sold' their customer base to Sawgrass who agreed to provide tech support for the TOG customers for a period of time. I know I received an email to that effect. I think...just my opinion... that TOG might have won but there was an issue of $$$ necessary to continue the fight. They apparently took some $$ in settlement and went away. They are apparently doing business selling LASER sublimation toner. the web site is Sublimation Toner They also have Sublimation Toner
> 
> Google TOG...there is a lot of information available..but bottom line they do not sell sublimation ink


You are close except for the fact TOG won the Markman phase, they had plenty money to continue.

A Markman hearing ruling in favor almost always means "game over" for the other party.

From the attached doc which was the court declaration after the Markman hearing...

"Accordingly, the Court stays the case for thirty (30) days to permit TOG to file a motion for summary judgment on that basis, if it chooses to do so. If TOG chooses to file such a motion, the case is stayed pending briefing and disposition of that motion."

*TOG could ask the court to conclude the case, the Markman loser is not asked this. *​ 
*It was not in TOG's interest to push summary judgement since the court may not award them much money, or maybe even no money. Maybe not even enough to cover legal expenses. TOG held the "card" that they could either continue with a high probability of busting the patent (the "nuclear option") or force Sawgrass to settle and then TOG goes away.*​ 
*The judge signaled there was cause to break the patent.*

" In light of the Court’s construction of the term “emulsifying enforcing agent” the Court questions whether the claims of the ’907 Patent are sufficiently enabled under 35 U.S.C. § 112, ¶ 1."​ 
"Accordingly, based on the Court’s examination of the intrinsic evidence in this case, the Court construes the term EEA to mean a chemical agent that disperses and stabilizes heatactivated dye solids within a liquid solvent and protects the dye solids from exposure to heat prior to and during the printing process."​ 
"Sawgrass conceded during the _Markman _hearing in this case that the EEA does indeed serve a heatshielding function. _See, e.g._, _Markman _Tr. 37, ll. 1-5 (“[The EEA] does shield from heat, and as a full reading of that office response shows, Dr. Xu was referring to heat not just in the printing process but prior to printing and other instances where the dye might be exposed to heat.” (statement of G. Trenholm Walker)). Accordingly, the Court finds that the invention of the ’907 Patent includes a heat protection limitation as suggested in Sawgrass’s response" ​ 
*The Markman determined what the patent was really about.*​


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## charles95405 (Feb 1, 2007)

I guess we disagree...IF TOG had filed the motion and it would have been granted and then they would have
WON....but they didn't....for what ever reason...so in my book...my opinion....they did not WIN as they did not take the necessary steps to finalize...


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## royster13 (Aug 14, 2007)

The appeals would have went of for years......TOG cut a deal, took some cash from Sawgrass and gave up....


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## GordonM (May 21, 2012)

Most civil cases are settled, either before reaching trial or during. The courts encourage it, as their only concern is providing a means for litigants to seek redress. If the parties settle first, all the better. Fewer taxpayer resources expended.

Companies go to court not to win or lose, but to get money, or on the other side, to mitigate the loss of money. If settlement terms arise that look more promising than seeing the case through to judgement, they'll take it. 

Suppose I want to take over your business. I have two basic ways of doing that: I can compete directly, and hope that I'll do so well that I'll get all your business and you'll just have to quit. That takes money, maybe tons of it. Or I can offer you more money than you're likely to make in your business during the next X years. You'll look at the options, and nine times out of ten you'll "settle" for the sure cash. You get it all at once, and it's virtually risk free.

What Sawgrass and TOG did is very commonplace. We might have preferred TOG's case providing precedent, but they weren't in it for the goodness of mankind.


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## Riderz Ready (Sep 18, 2008)

I guess there is no way to tell if TOG cashed out on the deal or just put their tales between their legs and disappeared with a few bucks. Over the years, I am not sure why, I had the impression from multiple post that they put the screws to Sawgrass and walked away with a pile of cash and a victory.

That is why I never got why someone else did not follow behind them.

Thanks


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## mgparrish (Jul 9, 2005)

charles95405 said:


> I guess we disagree...IF TOG had filed the motion and it would have been granted and then they would have
> WON....but they didn't....*for what ever reason*...so in my book...my opinion....they did not WIN as they did not take the necessary steps to finalize...


 
Charles,

For "what ever reason" should be obvious.

I pose you the question, why do you think the 2 people posting and asking about if they can sell their inks here? It's because if they can come in initially and grab a bunch of market share from Sawgrass before everybody else does. = low prices, means Sawgrass is competing against much lower prices.

Here is the part I disagree with you on from your original statement, the rest of what you state is correct.

"I think...just my opinion... that TOG might have won but there was an issue of $$$ necessary to continue the fight"

I think you are missing the point of "winning". The next step to go to summary judgement would not add much to their legal costs, they were 99% there anyway, no more court hearings, the judge issues a summary judgement and it's over. 

They already had incurred 99% of the costs already, it was the ninth inning and they were up 10 - 0 and the other team has 2 outs, the opposing player at bat has 2 strikes against him! 

1. No one "won" the lawsuit. From the court doc I presented it should be obvious that TOG _was_ going to win, that is why they were asked if they wished to proceeed to summary judgment!

2. TOG _won_ the Markman Hearing, the Markman hearing is only a step in the overall lawsuit.

3. The overall outcome was favorabilty to TOG $$$, so in that sense they "won".

Had TOG pursued to Summary Judgement they would have "won" the lawsuit. 

But in a *business sense* what were the consequencs of winning?

1. TOG and Sawgrass would now BOTH be in an open sublimation ink market. 

2. Ink prices go down, way down.

3. TOG had already spent a fortune on lawyer fees, our legal system is not like the EU where the loser must pay ligitation costs. Unless the specifc law in question allows it then in the US there is no guarantee you get a red dime if you "win". This is a flaw in the patent system and why we have so many bogus cases. You can sue but you don't necessarily need to pay the other guy if you lose.

4. TOG would no longer be able to maintain a "duopoly" with Sawgrass. TOG's ink prices were about 3/4ths of Sawgrass prices, but while cheaper than Sawgrass they would not be able to maintain anything near that price with open competition and Chinese inks coming in the US market. 

TOG was allowed to keep selling pending the lawsuit, Sawgrass was not able to get an injunction to forbid TOG from selling. All the other suppliers were ran out of the market by Sawgrass, therefore TOG enjoyed a _duopoly_ during the litigation, this allowed them to keep the prices high. Why lower the prices if there is no one under you to compete and the only other competitor is selling 25% higher?

So if TOG wins the case the only thing to "win" is that the Sawgrass patent is busted, then they can still sell inks _but at a much lower profit_. And they likely don't get back any or much of what it cost them for the litigation. So is this really "winning"?

In this case though "winning" is losing, it should be obvious why TOG did not want to break the patent AND stay in the sublimation, _the inks would not be nearly as profitable and they did not stand to even regain their lawyer and court costs if the "won"_, so better to force Sawgrass to pay them off and come out way ahead.


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## mgparrish (Jul 9, 2005)

royster13 said:


> The appeals would have went of for years......TOG cut a deal, took some cash from Sawgrass and gave up....


I doubt either company had money for Appeals. 

And then the advantage in the Appeals is always to the original winner in the original court proceeding, statistically speaking.

During any appeal a zillion others would have came in and killed the market for sawgrass unless they could get a "stay" on the lower court ruling from the Appeals Court. Slim chance on that one. By the time the Appeal was over the patent would have expired anyway or very nearly time to expire.


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## mgparrish (Jul 9, 2005)

Riderz Ready said:


> I guess there is no way to tell if TOG cashed out on the deal or just put their tales between their legs and disappeared with a few bucks. Over the years, I am not sure why, I had the impression from multiple post that they put the screws to Sawgrass and walked away with a pile of cash and a victory.
> 
> That is why I never got why someone else did not follow behind them.
> 
> Thanks


Yes, it amounts to that they got bought off. 

Why else would you walk away from "winning" for sure and stay in the sublimation ink business with a zillion competitors? Being _able_ to win the lawsuit was much more valuable then _actually_ winning the lawsuit.

I have heard a rumor from someone I deem reliable that the settlement was around $3M, but I can't confirm that is true.


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## charles95405 (Feb 1, 2007)

I am never gonna say anything Mike agrees with...But my last word on this is...if you are running a race and you are ahead but stop 50 feet from the finish line and walk off...you sure can't say you won...but then Mike can have the last word.....


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## pisquee (Jan 8, 2012)

Basically, TOG could have won, but didn't, but at the same time they didn't loose ... but then Sawgrass didn't win or loose in the TOG vs Sawgrass case either as it didn't finish. In your race analogy, TOG were way ahead of Sawgrass and bound to win, but they agreed to finish the race early, if Sawgrass paid TOG more than they would have won in the prize for winning the race.


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## mgparrish (Jul 9, 2005)

charles95405 said:


> I am never gonna say anything Mike agrees with...But my last word on this is...if you are running a race and you are ahead but stop 50 feet from the finish line and walk off...you sure can't say you won...but then Mike can have the last word.....


They (TOG) were paid $$$$ to walk off 50 feet from the finish line! 

_Read the attached documents_, it proves it! 91-1.pdf is the 1st doc.

The settlement was right after the "Order" document I posted yesterday that clearly showed 

1. TOG prevailed in the Markman ... they did not infringe the patent.

2. The judge indicated he questioned the validity of the patent and had enough facts to move to summary judgement against Sawgrass. This is above and beyond TOG not infringing the patent, it means the patent was going to be busted or modified, meaning Sawgrass could no longer use it against others in the sublimation market.

Charles, both parties "won" in a business sense, but no one "won" the lawsuit, the judge made no decision regarding the patent because they both settled. 

Sawgrass got all of TOG market share for a price giving them a full monopoly and TOG got compensated by sawgrass to their satisfaction. I call this "win win".

No one "won" the lawsuit since it was settled out of court, the judge did not have to rule against Sawgrass, _but he was going to_.


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## mgparrish (Jul 9, 2005)

pisquee said:


> Basically, TOG could have won, but didn't, but at the same time they didn't loose ... but then Sawgrass didn't win or loose in the TOG vs Sawgrass case either as it didn't finish. In your race analogy, TOG were way ahead of Sawgrass and bound to win, but they agreed to finish the race early, if Sawgrass paid TOG more than they would have won in the prize for winning the race.


Agree 100%.


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## pisquee (Jan 8, 2012)

Basically, if the OP or others wants to sell their own sublimation ink to the open worldwide market, they have three choices:
1. Pay Sawgrass their fees
2. Be prepared to fight Sawgrass in the courts
3. Wait for Sawgrass' patent(s) to expire

There is probably a good reason that there are a number of large manufacturers around the world opting for the first option.

(it is most likely cheaper and easier.)


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## irish213 (Oct 10, 2013)

what printers is your ink compatible with?


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## charles95405 (Feb 1, 2007)

Irish...FYI t his thread is over a year old.


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## rcfowler (Feb 7, 2015)

So, have the patents expired. Do you anticipate Sawgrass will now have real competition that can't be scared away or bought off? I'm a newbie just looking at the business and the Sawgrass pricing certainly slowed me down.


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## mgparrish (Jul 9, 2005)

rcfowler said:


> So, have the patents expired. Do you anticipate Sawgrass will now have real competition that can't be scared away or bought off? I'm a newbie just looking at the business and the Sawgrass pricing certainly slowed me down.


I think they have real competition now on the Epson platform.

Not so much on Ricoh, where they have now layed all their eggs mostly into one basket. SG has largely walked away from the Epson desktop anyway and not offering new desktop models sublimation support as they come out.

SG being able to both warranty the Ricoh models and now have a "private label" of their own is huge. I think they have huge advantage against competition there.

On Epson desktop Epson doesn't question warranties like Ricoh does in the US market, and they're much cheaper too, so the printer itself is less of a factor.


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## rcfowler (Feb 7, 2015)

Thanks,

I was already looking at a small, entry level printer, the Epson WF30. I see there is another thread on this topic that mentions Cobra as an ink supplier.


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## hawaiianphatboy (Apr 28, 2008)

rcfowler said:


> Thanks,
> 
> I was already looking at a small, entry level printer, the Epson WF30. I see there is another thread on this topic that mentions Cobra as an ink supplier.


I have purchased an Epson Artisan 1430 and the Cobra Ink CIS and am using the ICC profiles provided. Being new to sublimation printing I am still trying to figure things out. What I am wondering, is who else is selling sublimation inks for Epson printers since the patent did expire last year. Anyone know of any companies and have had quality results from any of them. Would be curious to know who else is out there that people in the business are using. Aloha


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## hawaiianphatboy (Apr 28, 2008)

imakesubink said:


> Hi, All!
> 
> I am new sublimation ink manufacturer from Korea.
> 
> ...


So have you started selling this ink in the US, and if so, under what name. Do you have any images showing the results of using your ink, or did you give up waiting on Sawgrass?


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## mgparrish (Jul 9, 2005)

hawaiianphatboy said:


> So have you started selling this ink in the US, and if so, under what name. Do you have any images showing the results of using your ink, or did you give up waiting on Sawgrass?


 The OPs post was back in 2012. But your question is good nonetheless.


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## afardissone (May 4, 2016)

Hello, I work in a chemical factory in South America. Here is difficult and expensive to import sublimation ink. We are interested to produce sublimation ink and we are looking for a partner to make a commercial agreement where we uses our installation in Argentina to produce and the partner give us the knowhow needed to produce it. Are you interested in it?
If you are, send me a private message please.

Best regards.


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