Attorneys Seth Greenstein and Skip London. Credit: IITC
The Federal Circuit Court of Appeals has heard from both sides in the patent case, with some of the 12 judges appearing “open to the cause of the aftermarket”.
The International Imaging Technology Council (IITC) reported on the case, with the association’s Tricia Judge attending, while attorneys Seth Greenstein and Skip London supported an amicus, or ‘friend of the court’ brief filed by the IITC in support of Impression Products.
Lexmark’s argument is that since the toner cartridges it refilled were originally sold overseas, they are IP-infringing. Impression Products is hoping to overturn the Jazz Photo ruling, which determined that a number of refurbished Fuji cameras did not infringe patents as the owner “has a right of repair”, but this decision was “limited […] to cameras first sold in the US”.
12 judges heard the arguments, with some “prickly, if not hostile” questions for Impression Products’ attorney Ed O’Connor, as the Federal Circuit Court of Appeals “has historically favoured patent holders” and these were the same judges who wrote the Jazz Photo ruling.
The US government, represented by the US Solicitor General, argued that there should be a “split position”, with some patent restrictions being removed, but not all of them being taken away on foreign products. The IITC said that there was “no clear winner” at the end of the day, with the case likely to move to the US Supreme Court, according to London.
Intel and a number of other OEMs have backed Impression Products’ position, while the Imaging Supplies Coalition (ISC) did the same for Lexmark in August 2015. Also at the hearing were lawyers representing Google, Intel and Samsung for Impression, and the Biotechnology Industry Organisation for Lexmark.
An Ohio judge agreed with Impression’s argument, but only for cartridges initially sold in the US, while remanufactured cartridges sold overseas “were effectively deemed a new product that infringed the US patent rights”, Bloomberg reported.
Another part of the case argues that the resale of copyrighted materials initially sold abroad should be allowed, as there is no difference between patent and copyright law. Pharmaceutical companies worry that such a ruling would enable firms to buy cheaper medicines abroad and ship them into the USA.
This prompted Circuit Judge Pauline Newman to question whether drug manufacturers should lose their rights when selling medicines such as HIV drugs to Africa, with the single-use restriction option for medical device manufacturers being overturned. “One rule doesn’t fit all,” she commented. A decision is not expected for several months.