Dutch Court Rules in Favor of Ink-Cartridge Remanufacturer in HP Patent-Infringement Case

Peace Palace, The Hague, the Netherlands

Lexology reports that the Court of Appeal of The Hague in The Netherlands has ruled in a patent-infringement case filed by HP Inc. against Digital Revolution that the sale of replacement ink cartridges is allowed, “even if the cartridges relate to an essential part of a patented invention.”

According to the court, the user of a printer “has an implied license to use the printer in a normal, well-functioning way, which includes the use of compatibles, provided that there is no protection for the cartridge itself.”

Lexology notes that: “In practice the implications of this decision could be limited, since the Court of Appeal also indicated that the outcome can be different if the consumer has agreed to limiting conditions when purchasing the printer.”

In its lawsuit, HP alleged that Digital Revolution directly infringed upon its EP 2 170 617 (“EP 617”) patent, “because all elements of claims 1 and 2 were present in the cartridges offered by Digital Revolution. “This was rejected by the District Court of The Hague, because it found the claims to be invalid. HP later also argued indirect infringement of claim 7. This was also dismissed by the Court, because this additional claim was filed too late in the proceedings in violation of the principle of due process.

According to Lexology:

“In the appeal proceedings, HP again argued direct and indirect infringement. The appeal on the grounds of direct infringement was rejected by the Court of Appeal, because the Court found claims 2-6 and 13 of EP 617 to be invalid. The most interesting part of the judgment relates to the Court’s decision on the alleged indirect infringement of claim 7…

“The Court of Appeal did mention one important exception to this rule: according to the Court the situation will be different if ‘limiting terms are agreed upon purchase of the printer.’ This suggests that if a manufacturer would sell an item under an express restriction to only use originals, a third-party could – under certain conditions – still be prevented from selling compatibles.

Wirth Consulting notes that the U.S. Supreme Court noted something similar in its ruling for the landmark case Impression Products v. Lexmark International. In that case, the U.S. Supreme Court ruled in favor of Impression Products, stating that once a product is purchased, the seller’s patent rights are exhausted. However, the court noted that the seller could enforce a contract under which the purchaser must obey the terms of the contract – for instance, under Lexmark’s Cartridge Return Program, consumers purchase toner cartridges at a discount from Lexmark, and agree to return the depleted toner cartridges back to Lexmark.

Lexology expects that this Duth case will be continued before the Dutch Supreme Court.

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