The Court of Appeal in the Hague ruled that the cartridges can be used and resold despite OEM’s patents and that consumers have a right to use compatibles “provided that there is no protection for the cartridge itself”.
Lexology reported that the decision could have “far reaching consequences for manufacturers of original appliances which use consumables” like ink cartridges that can be bought on the “aftermarket”. HP Inc brought the case against Digital Revolution (123inkt.nl) for infringement of its patent however it was noted that the Court of Appeal ruled that the “sale of replacement ink cartridges” should be allowed even if “the cartridges relate to an essential part of a patented invention” and said that consumers should be able to buy compatibles “providing there is not protection for the cartridge itself”. However, the Court also specified that there could be a different outcome if there has been an agreement to certain conditions when a printer is bought.
The article also explained that Digital Revolution remanufactures OEM cartridges and sells them throughout Europe but in this instance HP Inc alleged that the company had infringed their patent EP 2 170617 (EP617) because “all elements of claims 1 and 2 were present in the cartridge offered by Digital Revolution”, this was rejected by the Court of Appeal as it found the claims to be void as well as the fact that the claim was filed “too late in the proceedings” which is in violation of “the principle of due process”.
Also rejected was HP Inc’s claim of indirect infringement and this was due to Article 73 of the 1995 Dutch Patent Act (DPA) which describes indirect infringement as: “The patentee may institute the claims at his disposal for enforcing his patent against any person who […] supplies or delivers in or for his business, means relating to an essential part of the invention to others than those who by virtue of Articles 55 to 60 are authorised to work the patented invention, […] if that person knows, or if that it is evident considering the circumstances, that those means are suitable and intended for that application.”
Furthermore the article stated that Digital Revolution said that it does not “offer or deliver cartridges to anyone other than those authorised under the terms of Articles 55 to 60 [which apply to licensed use] to apply the patented invention” and that “if a consumer purchases an HP printer for which the cartridges offered by Digital Revolution are suitable and intended, this implies that a license is obtained to use that printer, including the method according to claim 7 of EP 617 which is incorporated in the software of the controller of the printer” the Court was in agreement and stated:
“It is established that the printer only operates with a cartridge that has a memory device capable of communicating with the printer software so that the method of claim 7 can be applied. Miscommunication, for example, because the memory device is not configured for application of that method, irrevocably leads to the rejection of the cartridge and thus to the printer system not working, as HP has expressly stated. Since the purchaser of an HP printer expects the printer to function in a normal way, that permission […] is also deemed to extend to the use of cartridges suitable for that printer which do not itself infringe any product claim […]”.
The case is expected to continue in the Dutch Supreme Court.