EFF Urges Supreme Court to Rule for Impression Products in Lexmark Toner-Cartridge Refilling Case

The Electronic Frontier Foundation (EFF) – a non-profit group devoted to defending civil liberties in the digital world and founded in 1990 – reported that yesterday it submitted a brief to the United States Supreme Court urging the court to rule in favor of Impression Products, Inc. in the closely watched Impression Products, Inc. v. Lexmark International, a case that centers around how much control a company – in this case, Lexmark – should have over products it’s sold – in this case, printer toner cartridges.

The EFF asks, when users purchase printer cartridge, are users free to do what they wish with the cartridges? Or can the company control what they do with them, even after the user purchases them and takes them home? The EFF urged the U.S. Supreme Court to protect consumers’ property rights in a court case centering on the “patent exhaustion” doctrine.

In Impression Products, Inc. v. Lexmark International Inc., printer company Lexmark sold printer cartridges with restrictions on refilling them and reselling them. Impression Products acquired used Lexmark ink cartridges and then refilled and resold them, sparking a lawsuit from Lexmark, with Lexmark claiming that Impression Products infringed on its patents by doing so.

In February 2016, the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., decided in Lexmark’s favor, ruling that a customer’s use of a product can be “restricted” by the patent owner with something as simple as a notice on disposable packaging.

In the amicus brief filed yesterday, the EFF – joined by Public Knowledge, AARP, and the AARP Foundation, Mozilla, and R Street – argued that “conditional sales” like the ones attempted by Lexmark “cannot impose arbitrary conditions on a customer’s use of a product.” The brief argues that the Federal Circuit’s ruling is incorrect and goes contrary goes against the doctrine of “patent exhaustion,” under which, once a patent owner sells a product, it cannot later claim the product’s use or sale is infringing.

“If allowed to stand, the lower court’s decision could block your right to reuse, resell, and tinker with the devices you own,” said EFF Staff Attorney Daniel Nazer, who is also the Mark Cuban Chair to Eliminate Stupid Patents. “Under this theory, consumers could be held liable for infringement for using products purchased legally, and that the patent owner has already been paid for.”

The EFF states that patent exhaustion has been part of centuries of law upholding the right of individuals to use and resell their possessions. If patent owners can control goods after sale, then all sorts of activities, such as security research, reverse engineering, and device modification,, would be threatened.

“This trick is straight out of some companies’ wishlists for restricting user rights,” said EFF Staff Attorney Kit Walsh. “They have tried a variety of legal tactics to restrict your ability to repair or resell the things you buy, and to prevent experts from investigating how they work. That includes experts who want to figure out if your devices are secure and respecting your privacy, or who want to build products that can plug-in to your devices and make them do new and useful things. We urge the Supreme Court to reaffirm the patent exhaustion doctrine, and protect people’s rights to own and understand the products they’ve purchased.”

The case is scheduled to go to argument at the U.S. Supreme Court in March.


In 2010, Lexmark sued several companies for allegedly infringing upon its printer-cartridge patents by remanufacturing and reselling printer toner cartridges, with all of the companies settling with Lexmark except for Impression Products.

In February 2016, the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. ruled that Impression Products infringed on Lexmark’s patents when it imported remanufactured Lexmark laser-printer toner cartridges back into the United States after they were first sold overseas.

The closely watched case reinforces U.S. patent owners’ ability to control the use of their products after they are sold. The court also found Impression Products liable for selling refurbished Lexmark toner cartridges that were originally marketed for a single use under Lexmark’s return-and-recycle toner-cartridge program.

The February 2016 decision upheld a ruling by a lower federal court in Cincinnati, Ohio, that found Impression Products liable for selling Lexmark’s cartridges first sold abroad. It also overturned a ruling that cleared Impression Products from liability over the sale of Lexmark’s cartridges in the United States.

In October 2016, the administration of former U.S. president Barrack Obama filed a brief with the U.S. Supreme Court asking the court to overturn the February 2016 ruling that allowed Lexmark International to sue aftermarket resellers of its “single use” toner cartridges on the basis of alleged infringement of Lexmark patents.

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