Lexmark Wins Key Patent-Infringement Case Against Remanufactured Cartridge-Reseller Impression Products

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Reuters reports that the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. ruled on February 12th that printer-cartridge refurbisher Impression Products infringed on Lexmark International’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 decision “will assist Lexmark in its efforts to combat the importation and sale of inferior toner cartridges that infringe our intellectual property rights,” said Lexmark Vice President and General Counsel Bob Patton, in a statement.

The decision upholds 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. Consumer groups had argued patent law should not restrict customers from reselling or altering products they lawfully purchased.

The attorney representing Impression Products, Edward O’Connor, said that he will appeal to the U.S. Supreme Court.

The case has been closely  watched by those in the technology and pharmaceutical industries because of the possible impact of the case on their international trade.

The case essentially involved whether “foreign sales restrict the patent owner’s ability to sue for infringement, if the buyer sells those products back into the United States, sometimes at a lower price,” according to Reuters.

Various drug manufacturers “warn” that an adverse decision for them would prevent them from selling lower-cost drugs to poorer countries outside the United States.

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

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