Common Law - The FindLaw Consumer Protection Law Blog

Consumers Can Modify or Refurbish a Patented Product, SCOTUS Rules

Most United States Supreme Court decisions don't make that much of an impact on the day to day lives, or pocketbooks, of most Americans. However, a recent decision about printer ink cartridge patents is way more applicable to everyday Americans (that still use paper or printers) than one might initially think.

The case between Impression Products and Lexmark has finally been decided, and while Impression won the day, consumers were the real winners in the case. The end result is that now consumers and businesses have just a little bit more protection when it comes to selling non-manufacturer refurbished and modified products.

Details of the Case

Lexmark, a printer manufacturer, was seeking to prevent Impression Products from selling refurbished Lexmark printer ink cartridges. Impression was simply filling a need in the market for reduced cost printer ink cartridge replacements by purchasing discarded or recycled used cartridges, and refilling the cartridges and disabling software that prevented the re-use. Basically, Impression was selling refilled Lexmark ink cartridges at a discount compared to new ones. Naturally, this cut into Lexmark's bottom line and motivated the company to attempt to put a stop to the secondary market.

To accomplish their goal of ending the secondary printer ink cartridge market, Lexmark sought to hold Impression liable for patent infringement for selling refurbished/refilled cartridges. While the lower federal court and appeals court agreed with Lexmark, allowing the printer bullying to continue, the Supreme Court did not. In ruling on this matter, the Supreme Court found that patent protection did not extend past the point of the first sale of the patented product. This meant that Impression cannot be stopped from selling refurbished printer cartridges, the same way a person, or used car dealer, cannot be held liable for patent infringement for fixing up a used car for sale.

This does not mean that a consumer can manufacture and sell a copied product without infringing. But it does mean that a consumer can modify or refurbish a patented product that has already been sold once, and sell their modified/refurbished version without infringing on the original manufacturer's patent. Unfortunately, there may be other avenues for manufacturers to prevent third parties from refurbishing or modifying their products, however patent based challenges are likely no longer a strong option.

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