U.S. Supreme Court Considers Foreign Patent Rights Case

cageymaru

cageymaru

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Impression Products v. Lexmark International is a case that is being considered by the U.S. Supreme Court as it has far reaching implications in regards to foreign patent rights. Lexmark International sells printers and ink cartridges domestically and internationally. The ones that are sold internationally have a label on them that says they are restricted to a single use. Impression Products bought a large supply of the empty cartridges from a reseller and refilled them. They then began importing them back into the U.S.A. which did not go over well with Lexmark.

Lexmark has successfully argued in the D.C. Circuit Court of Appeals that this violates current patent law. The purpose of the patent law as currently written is to allow companies to sell products in various locales around the globe for different prices. This allows software for example to be purchased by poorer countries at a reduced price while maintaining higher prices in more affluent countries to maximize revenue.

The U.S.Government isn't agreeing though. Patent exhaustion prevents the patent owners from having control over products after the first authorized sale. Conditions can be attached to the initial sale such as who can buy it and even dictate the use of the product, but then the patent rights are exhausted. Also items such as books can be resold by libraries due to patent and copyright laws that date back hundreds of years. The U.S. government considers this to be a monopolistic situation.

Interesting case as the ruling will set a precedent that will undoubtedly be used for software, medications, chips, etc in the future. How do you feel about the case? Should Lexmark be allowed to monopolize the market by restricting the use of their used printer cartridges? If I buy a pack of refilled cartridges from an international seller am I going to be in trouble with the law? Lots of change could come from this case if the Supreme Court takes it on.

Justice Stephen Breyer, the court's patent expert, said "any monopolist, including a patent monopolist, would love to be able to go to each buyer separately and extract from each buyer and user the maximum amount he would pay for that particular item."

"Dentists would pay more for gold perhaps than someone who wants to use gold for some other thing. Okay? They'd like that. But by and large, that's forbidden under many laws, even though it does mean slightly restricted output, and it also means a lower profit for the monopolist," Breyer said. "This precedent is very hard for you to get around."
 
How is this any different then selling a used product? Many people here buy a pair of shoes, a watch, clothing, a video game console, etc.. and then they resell it after it's been used.

Unless they are rebranding the product and violating the patent that way, what is so wrong about selling a used item?
 
Interesting , i know some companies like HP go really far with putting security chips that disable the cartridge after its depleted , but a law against refilled cartridges sounds insane.
The refill industry for cartridges/ toners is really big here and i cant possibly believe anyone would allow those companies patents on refills (as opposed to compatible units manufactured by competition)
 
Cyraxx said:
How is this any different then selling a used product? Many people here buy a pair of shoes, a watch, clothing, a video game console, etc.. and then they resell it after it's been used.

Unless they are rebranding the product and violating the patent that way, what is so wrong about selling a used item?
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Well if they're like any other 2nd hand ink/toner cartridge they're 'remanufactured'. It contains old and new parts. Consumers buy them with the understanding they are almost as good as the name brand. They should be rebranded because they are not the OEM's and the OEM is no longer responsible for it's performance. If they are not relabeling them it's not patent infringement it's FRAUD.
 
T_A said:
Interesting , i know some companies like HP go really far with putting security chips that disable the cartridge after its depleted , but a law against refilled cartridges sounds insane.
The refill industry for cartridges/ toners is really big here and i cant possibly believe anyone would allow those companies patents on refills (as opposed to compatible units manufactured by competition)
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Those HP carts even have an expiration date. I've had a still full cartridge refuse to print until I pulled the battery from the printer to make it forget the current date.
 
otherweeb said:
Well if they're like any other 2nd hand ink/toner cartridge they're 'remanufactured'. It contains old and new parts. Consumers buy them with the understanding they are almost as good as the name brand. They should be rebranded because they are not the OEM's and the OEM is no longer responsible for it's performance. If they are not relabeling them it's not patent infringement it's FRAUD.
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From what I understand in the story it's...

3rd Party buys up a huge supply of empty ink cartridges that were previous made by the manufacturer. They place ink inside the cartridge and resell them. Doesn't sound like they are modifying it.
 
otherweeb said:
Those HP carts even have an expiration date. I've had a still full cartridge refuse to print until I pulled the battery from the printer to make it forget the current date.
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think that's bad?

https://arstechnica.com/gadgets/201...ost-2500-for-a-set-are-still-20-percent-full/
2500 hundred dollar ink cartridges need to be replaces and have 20 percent remaining

remember the promises of "using computers will save paper because we email everything to everyone?"

fat chance.
 
They basically want a software license for ink cartridges.

I hope Lexmark loses this one... Seems silly that I cannot buy something that is patented, modify it a bit, and sell it again. It sure would be a silly thing to just throw away useful items because they are patented.
 
This is actually an interesting case of first impression (okay so I'm a patent attorney). :confused:

Patent exhaustion is also known as the first sale doctrine. A patent holder cannot control the product after the first "legitimate" domestic sale. Lexmark would have no chance of winning this case if it were a domestic US case, and indeed that portion of the case was uncontested.

Patent rights have never been subject to a worldwide first sale doctrine, while copyright protected works have -- so used books and music can be sold in the US with no problem.

The real issue is whether cartridges that were sold and used outside the US can be refilled and then imported. It is undisputed that Lexmark cannot control the carcass of its used product within the US absent some fraudulent activity like marketing it as a new cartridge or altering its chip (yes it sells domestically in the US with a chip at a significant discount (like 20%) as the non chip version can be refilled).

And the DC Circuit did not decide this (as erroneously reported), it was an en banc (the whole bunch) decision of the pros at the Federal Circuit (the guys that only decide patent cases) with a decision 10-2 in favor of Lexmark.

This decision will have far reaching effects on the import of gray market barely used goods at very low prices, oh say "slightly" used (like one day would qualify) iPhones from China and the like.

My guess at this point with an 8 member court is a 4-4 tie that will leave the Federal Circuit decision intact, i.e. Lexmark

p.s. Breyer is an idiot, gold and dentists? If that is the best he has we need him to retire.

and why bother innovating if your patents are not useful. Maybe we should just make it legal to copy everything? So if you are writing code forget it, we will steal it and sell it at a discount. The point: it is a slippery slope, so be very careful what you wish for, we will be coming for you next. :wtf:
 
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I read the article but am still not 100% clear if they're talking about ink or toner cartridges. Does Lexmark still sell and or supply for inkjet printers in the U.S.? I've got a couple of Lexmark inkjets here that I can't get ink for because I'm told they don't sell consumer inkjets or supplies in Canada.
 
MrGreg62 said:
I read the article but am still not 100% clear if they're talking about ink or toner cartridges. Does Lexmark still sell and or supply for inkjet printers in the U.S.? I've got a couple of Lexmark inkjets here that I can't get ink for because I'm told they don't sell consumer inkjets or supplies in Canada.
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printer toner cartridges, I do not think that inkjet was an issue
 
So this sounds a bit crazy, they can't stop resale/modification of copyrighted material after the first sale, but merely having a patent on it allows it? I don't understand what makes the refurbishing/refilling of a plastic box with powder special, wouldn't that affect reloading ammunition, replacing the "lifetime transmission fluid" in my Subaru before resale, or the replacement of a non-removable battery in a phone/laptop/UPS prior to ebay completely illegal if the manufacturer merely decided to they wanted to restrict used sales? Can't nintendo just say that Switch cartridges transfer a one use license key to the console during first launch, and restoring that key for resale is a patent offense? Recycling an aluminum can into a new can with the exact same cylindrical shape would be wrong even if they changed the label? I guess we'd rather have these empty cartridges become landfill.
 
The only thing I'd be wary of with refurbished toner cartridges is that they're done properly. If you use manufacturer toner, your warranty is maintained. Often though, refurbished or 3rd party toner can invalidate your warranty if an issue with the cartridge gums up the printer. I honestly don't print that much, though. I think the last 2 laser printers I've owned I never needed to replace it. (first one wasn't compatible with 64bit windows, current one is slightly incompatible with windows 10 >.< )
 
Myself and anyone whos ever had to install a Lexmark printer for a grandparent hopes Lexmark loses and get sued into oblivion.
 
Logan321 said:
The only thing I'd be wary of with refurbished toner cartridges is that they're done properly. If you use manufacturer toner, your warranty is maintained. Often though, refurbished or 3rd party toner can invalidate your warranty if an issue with the cartridge gums up the printer. I honestly don't print that much, though. I think the last 2 laser printers I've owned I never needed to replace it. (first one wasn't compatible with 64bit windows, current one is slightly incompatible with windows 10 >.< )
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"slightly"??

I usually never use refurbished cartridges (or refurbished anything really) or 3rd party cartridges. It's because I don't print that much that it doesn't save me a whole lot of money by going cheap, just opens myself up to a whole lot of headaches if I bought a single bad batch of Ink Cartridge.
 
Master_shake_ said:
think that's bad?

https://arstechnica.com/gadgets/201...ost-2500-for-a-set-are-still-20-percent-full/
2500 hundred dollar ink cartridges need to be replaces and have 20 percent remaining

remember the promises of "using computers will save paper because we email everything to everyone?"

fat chance.
Click to expand...

At least some of the HP laser printers do the same thing. But they also have a setting to allow you to keep printing even after the counter chip says the toner is empty.

Most printers don't actually monitor real toner usage. They just go by page count.

And the page yield is given with a 5% coverage of the paper.

If you print a bunch of pages with a lot of toner on them, the page yield is going to be significantly less.

By having the default setting to be a decent amount lower than what it could be, they avoid having to replace a bunch of cartridges that run out before the given page yield is reached.


chenw said:
"slightly"??

I usually never use refurbished cartridges (or refurbished anything really) or 3rd party cartridges. It's because I don't print that much that it doesn't save me a whole lot of money by going cheap, just opens myself up to a whole lot of headaches if I bought a single bad batch of Ink Cartridge.
Click to expand...

I recently got rid of an old Dell (Lexmark) B/W laser printer that I had for about 6 years. I got it used. In all that time I only purchased one drum and cartridge for it, and that was only because the old drum and cartridge wore out.

For toner refill, I spent a whopping $17 for 2 big bottles of it and never even ended up using both of them before I got rid of it.

If I had been buying Dell branded carts, I would have probably spent a couple hundred at least.
 
RealBeast said:
This is actually an interesting case of first impression (okay so I'm a patent attorney). :confused:

Patent exhaustion is also known as the first sale doctrine. A patent holder cannot control the product after the first "legitimate" domestic sale. Lexmark would have no chance of winning this case if it were a domestic US case, and indeed that portion of the case was uncontested.

Patent rights have never been subject to a worldwide first sale doctrine, while copyright protected works have -- so used books and music can be sold in the US with no problem.

The real issue is whether cartridges that were sold and used outside the US can be refilled and then imported. It is undisputed that Lexmark cannot control the carcass of its used product within the US absent some fraudulent activity like marketing it as a new cartridge or altering its chip (yes it sells domestically in the US with a chip at a significant discount (like 20%) as the non chip version can be refilled).

And the DC Circuit did not decide this (as erroneously reported), it was an en banc (the whole bunch) decision of the pros at the Federal Circuit (the guys that only decide patent cases) with a decision 10-2 in favor of Lexmark.

This decision will have far reaching effects on the import of gray market barely used goods at very low prices, oh say "slightly" used (like one day would qualify) iPhones from China and the like.

My guess at this point with an 8 member court is a 4-4 tie that will leave the Federal Circuit decision intact, i.e. Lexmark

p.s. Breyer is an idiot, gold and dentists? If that is the best he has we need him to retire.

and why bother innovating if your patents are not useful. Maybe we should just make it legal to copy everything? So if you are writing code forget it, we will steal it and sell it at a discount. The point: it is a slippery slope, so be very careful what you wish for, we will be coming for you next. :wtf:
Click to expand...


I don't understand why patents could be invoked against any activity other than making something that matches the patent? It may be law, but I don't understand why it would be. If they need price protection, then they should implement tariffs.
 
RealBeast said:
Patent rights have never been subject to a worldwide first sale doctrine, while copyright protected works have -- so used books and music can be sold in the US with no problem.
Click to expand...
The copyright part makes sense to me as a non-lawyer. Buying and selling articles is clearly not the same as creating more of them, which is what a copyright addresses.

But it doesn't match what happened between Omega and Costco. Your thoughts?
 
Hmm do the patents applied to the cartridges need to actually have value? There's a reason there aren't universal standards for printer ink cartridges - the companies make money on the proprietary cartridges. The patents in these cartridges are effectively irrelevant as they are all nearly the same technology, it's the compatibility with the printer that matters. So basically whatever patents that exist on these cartridges they exist to prevent other companies from making "generic" versions and not because there is a legitimate advantage to these patents. So basically the patents solely exist to prevent competition, not to improve the product itself.
 
cyclone3d said:
I recently got rid of an old Dell (Lexmark) B/W laser printer that I had for about 6 years. I got it used. In all that time I only purchased one drum and cartridge for it, and that was only because the old drum and cartridge wore out.

For toner refill, I spent a whopping $17 for 2 big bottles of it and never even ended up using both of them before I got rid of it.

If I had been buying Dell branded carts, I would have probably spent a couple hundred at least.
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My bad, I was talking from an Ink cartridge point of view, not Colour laser printer.

I didn't consider colour laser because it was out of the family's budget and none supported CD printing, which I use BD-R's for important backups.
 
I know the PTO has been getting more FKd up by the year, but there is no way in hell this belongs as a subject of anything patentable, and it's also ridiculous in general.
 
xX_Jack_Carver_Xx said:
I know the PTO has been getting more FKd up by the year, but there is no way in hell this belongs as a subject of anything patentable, and it's also ridiculous in general.
Click to expand...

rectangle with rounded corners and a border that the bottom and top and roughly equal.

:D
 
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