The U.S. Supreme Court this morning agreed to hear the case of Lexmark v. Impression Products. This is a good sign that the highest court of the land will strike down Lexmark’s efforts to control cartridges after their sold, and to overturn the precedents that Lexmark has based its activities upon.
The case will be heard sometime in the new year. Int’l ITC will file another friend-of-the-Court brief on behalf of cartridge remanufacturers by the January 24 deadline. Join Int’l ITC today to help us continue to represent the industry in this important effort.
Lexmark claimed that dozens of remanufacturers, including Impression Products, infringed its patents when it imported Lexmark’s toner products back into the United States after they were first sold abroad.
Lexmark also argued that its patents were infringed when those remanufacturers sold remanufactured Lexmark cartridges that were originally marketed for a single use under its return and recycle program, also known as the “prebate” program.
The first court to hear the case, the US District Court, ruled that Lexmark’s cartridge return program was invalid under patent law, but failed to overrule the requirement that only U.S.-made cartridge cores could be used in remanufacturing as only those cores were free of patent rights. Both parties appealed.
The Appellate Court’s decision to hear the case “en banc” indicated that it was seriously considering overruling the existing precedents in Jazz Photo, regarding the international first sale doctrine, and Mallinckrodt, which allows for post-sale restrictions on patented items. But at the hearing last year, it was clear that the vast majority of the judges favored patent holder rights, and some were even hostile toward Impression Products’ position.
So, sadly, it was no surprise that the Federal Circuit decided in February to retain its long-standing rule that overseas sales of a product don’t exhaust a patent owner’s right to sue in the U.S., concluding that the 2013 decision in the Kirtsaeng v. Brown, Little that foreign sales exhaust copyrights has no impact on patent law.
How will the Supreme Court rule?
The U.S. Supreme Court has routinely been overturning patent holders’ positions supported by the federal circuit. It overturned existing copyrights in items first sold overseas in the 2013 Kirtsaeng decision. In 2008, the ruling in Quanta v. LG held that the first sale exhausts all domestic patent holders’ rights, potentially overturning several precedents relied on by Lexmark, such as the single-use case of Mallinckrodt, in question.
The Int’ ITC has filed five amicus briefs in support of the position taken by cartridge remanufacturers in support of free trade in imaging supplies. The Int’l ITC wants decision makers at all levels of government to know about the importance of our industry. These briefs convince judges of the importance of a fair and open marketplace for imaging supplies.