Vistaprint 2009 Annual Report Download - page 49

Item 3. Legal Proceedings
On July 27, 2006, Vistaprint Technologies Limited, a wholly-owned subsidiary of our subsidiary
Vistaprint Limited, filed a patent infringement lawsuit against print24 GmbH, unitedprint.com AG and
their two managing directors in the District Court in Düsseldorf Germany, alleging infringement by the
defendants in Germany of one of Vistaprint Technologies Limited’s European patents related to
computer-implemented methods and apparatus for generating pre-press graphic files. On June 7,
2007, unitedprint.com AG filed a patent nullification action in the German Patent Court in relation to the
same European patent at issue in Vistaprint Technologies Limited’s infringement lawsuit against
print24 and its co-defendants. On July 31, 2007, the District Court in Düsseldorf ruled in Vistaprint
Technologies Limited’s favor on the underlying infringement claim against print24 and its
co-defendants, granting all elements of the requested injunction and ordering the defendants to pay
damages for past infringement. The Düsseldorf District Court’s ruling went into effect in early
September 2007 and was not appealed by the defendants. On November 13, 2008, the German
Patent Court held an oral hearing on the patent nullification action brought by unitedprint.com and
revoked the patent at issue. The Patent Court issued a written opinion stating the basis for its ruling on
March 24, 2009 and, on April 22, 2009, Vistaprint Technologies Limited filed a notice of appeal of the
Patent Court’s ruling with the German Federal Supreme Court. We are unable to express an opinion as
to the likely outcome of such appeal.
On May 14, 2007, Vistaprint Technologies Limited filed a patent infringement lawsuit against
123Print, Inc. and Drawing Board (US), Inc., subsidiaries of Taylor Corporation, in the United States
District Court for the District of Minnesota. The complaint in the lawsuit asserts that the defendants
have infringed and continue to infringe three U.S. patents owned by Vistaprint Technologies Limited
related to browser-based tools for online product design. The complaint seeks an injunction against the
defendants and the recovery of damages. The defendants filed their Answer and Counterclaims to the
complaint on June 7, 2007, in which they denied the infringement allegations and asserted
counterclaims for declaratory judgment of invalidity, unenforceability and non-infringement of the
patents-in-suit. In August 2007, another Taylor Corporation subsidiary, Taylor Strategic Accounts, Inc.,
was added as an additional defendant in the case. The exchange of relevant documents and records
and the depositions of fact witnesses in connection with the allegations of the parties have been
substantially completed. In early June 2008, newly discovered third party prior art documents were
introduced into the litigation. These documents had not been reviewed and considered by the U.S.
Patent Office prior to issuance of the patents-in-suit. For that reason, on June 30, 2008, Vistaprint
Technologies Limited requested the United States District Court to stay the litigation to provide the U.S.
Patent Office an opportunity to reexamine the patents-in-suit in light of these newly discovered
documents. On September 2, 2008, the Court granted Vistaprint Technologies Limited’s request for a
stay. Subsequent to the Court’s decision, Vistaprint Technologies Limited submitted a request for
reexamination of each of the patents-in-suit to the U.S. Patent Office. The reexamination requests
were granted in February 2009. Pursuant to the Court’s order, the stay will remain in place pending the
resolution of the requests for reexamination. On October 28, 2008, a St. Paul, Minnesota law firm also
filed requests with the U.S. Patent Office seeking reexamination of the three patents-in-suit. The name
of the client who engaged the firm to prepare and file the reexamination requests was not disclosed by
the firm, but we believe that the client was either Taylor Corporation or an affiliate of Taylor
Corporation. The reexamination requests were granted in May and June 2009. We are unable to
express an opinion as to the likely outcome of any such reexamination or of the underlying lawsuit.
On July 29, 2008, a purported class action lawsuit was filed in the United States District Court for
the Southern District of Texas (the “Texas Complaint”) against VistaPrint Corp., VistaPrint USA, Inc.,
Vertrue, Inc. and Adaptive Marketing, LLC (collectively, the “Defendants”). Adaptive Marketing, LLC is
a Vertrue, Inc. company that provides subscription-based membership discount programs, including
programs that are offered on our Vistaprint.com website (Vertrue, Inc. and Adaptive Marketing, LLC
Form 10-K
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