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Appeals in Lexmark IP case continue

April 21, 2016

USSupremeCourtThe Electronic Frontier Foundation (EFF) has filed an amicus brief in the case, which the OEM won over remanufacturer Impression Products.

BoingBoing reported on the case, won by Lexmark in the US in February this year, which began when Impression was named in an IP infringement case in October 2013. The case referred to “unlawful importation […] the sale for importation and/or the sale within the United States after importation” of infringing remanufactured and cloned aftermarket cartridges, with the remanufacturer moving to dismiss claims and overturn the Jazz Photo decision that impacts on patent exhaustion, or the “first-sale doctrine”.

This was also influenced by the Kirtsaeng case in 2013, which prevented copyright owners from stopping imports and reselling content sold abroad. Impression’s case went to the appeals circuit, with Lexmark opposing a ruling it had exhausted patent rights in its Prebate programme. Impression also wished to overturn a ruling that it had infringed Lexmark’s patents relating to remanufactured cartridges that used empties from outside the USA.

However, the ruling decided Impression “infringed the patent rights of Lexmark […] when it imported Lexmark’s toner products back into the United States after they were first sold abroad”, as well as that it was “liable for selling refurbished Lexmark cartridges that were originally marketed for a single use under its return and recycle programme”. Appeals supporting Impression were heard in October 2015, including from Google, Intel, Dell and the New York Times, and legal experts had predicted a win for the remanufacturer last year, with some attacking Lexmark’s “baffling” case.

BoingBoing noted that the so-called “printer ink wars may make private property the exclusive domain of corporations”, because of Lexmark’s previous legal cases against the aftermarket to combat remanufacturing, and referred to the amicus brief filed by the EFF, which discussed the “two important rulings” at the centre of the case that give patent owners “a roadmap for undermining consumer ownership”, with consumers perhaps not even aware “about what notices were placed on goods earlier in their ownership history”.

Asking the Supreme Court to overturn the “dangerous ruling”, the EFF continues by adding that “because patent infringement generally does not require ‘intent’, you could find yourself liable for the use of goods that you purchased legally and that the patent owner has already been paid for”. It notes that the decision “undermines centuries of law upholding the right of individuals to use and resell their possessions”, and hoped that the court “restores our right to pawn the things we own”. Lexmark was recently acquired by Chinese aftermarket company Apex.




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