In the lawsuit heard in the Eastern District of Texas, ColorQuick accused Vistaprint of infringing on a patent it held for preparing production data for a print job. ColorQuick's patent is for prepress process that involves revising a computer file in response to user changes, and its lawyers argued that Vistaprint's on-line studio, which enables customers to design, among other things, business cards, brochures, and flyers using various templates, was the equivalent of its invention thereby infringing the patent.

In an interview with PrintWeek, Tom Friel, head of the intellectual property practice at Cooley LLP, the law firm that successfully represented Vistaprint, said, "In this case it was somebody who was claiming to have a basic patent that was necessary in order to practice prepress and the court looked it at it and said, 'No that's not the way it is - you've got a patent that covers some limited things and if want to prove an infringement case you got to convince the jury of an equivalent,' and they were unable to do that."

This wasn't the first time ColorQuick had turned to the legal system with claims of prepress software patent infringement. It also sued Kodak, settling for an undisclosed amount, and had filed suits against FedEx and US-based retailer OfficeMax, who were essentially acting as resellers for Vistaprint through their branded web sites. ColorQuick eventually pulled those two suits, Friel said, adding, "They claimed they were first and early and they were going after everybody."

Friel said it was still uncertain as to whether ColorQuick would appeal the jury's decision, but added, "As an advocate I would say what could they possibly appeal? It was such a decisive win. But cases get appealed for a lot of different reasons. ColorQuick thought the patents were pretty important and they were willing to take on some pretty big players in the industry."

Vistaprint is based in the Netherlands and its US operations are headquartered in Massachusetts. Friel and his legal team had initially sought to have the case heard in Massachusetts, but it ended up in a Texas judicial district known to be especially tough on corporate defendants, making the win all the more gratifying.

"This decision may cause ColorQuick to stop its campaign against printers and print services sellers," Friel added. "I guess it's hard to predict what kind of implications this decision could have on the overall printing industry, but the patent covered prepress, which is pretty important for printing."  

With technology playing an ever important role in the printing industry, Friel suggested there could be additional patent disputes going forward. "The modernization of the printing industry has gone pretty far, pretty fast, and the filing of patent applications mirrors that," he added. "So it's now a pretty crowded field."