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US backs “overturn” of Impression Products case

October 17, 2016

The Obama administration has agreed that the Supreme Court should “overturn” the patent exhaustion ruling won by the OEM against Impression Products.

The US Supreme Court

The US Supreme Court

Reuters reported that last week, the Obama administration backed the US Supreme Court’s review of Lexmark’s patent exhaustion case win earlier this year. The article noted that it was in the administration’s view that the Supreme Court “should overturn a ruling that allows Lexmark International to sue aftermarket resellers of its ‘single use’ toner cartridges for patent infringement”.

The Obama administration filed a brief in the Supreme Court last Wednesday, with Acting Solicitor General Ian Heath Gershengorn said to have “urged” the court to “review a decision by the full US Court of Appeals for the Federal Circuit”, which had decided 10 to 2 in February that US remanufacturer Impression Products had “infringed Lexmark’s patents by marketing refurbished Lexmark cartridges that originally were sold with ‘single use’ or ‘no resale’ restriction in the US and abroad”.

The case began when Impression was named in an IP infringement case in October 2013 referring to the “unlawful importation […] the sale for importation and/or the sale within the United States after importation” of a number of infringing remanufactured and cloned aftermarket cartridges.

Impression moved to dismiss claims and overturn Jazz Photo, which impacts on patent exhaustion, or the “first-sale doctrine”, influenced by the Supreme Court’s ruling in the Kirtsaeng case in 2013, which prevented copyright owners from stopping imports and reselling content sold abroad. This went to the appeals circuit, with Lexmark opposing a ruling that 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 in February decided that 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”.

The Recycler reported in March that the remanufacturer would appeal the judgement in favour of Lexmark, and appointed Andrew Pincus as its legal counsel.

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