Impression Products’ Eric Smith. Credit: Krista Belcher
The US remanufacturer was interviewed about its potential case in the US Supreme Court against the OEM.
The Lexmark-Impression Products legal case was decided in Lexmark’s favour earlier this year, with the US Court of Appeals ruling that the US remanufacturer had “infringed Lexmark’s patents by marketing refurbished Lexmark cartridges that originally were sold with ‘single use’ or ‘no resale’ restriction in the US and abroad”.
The case began when Impression was named in an IP infringement case in October 2013 referring to the “unlawful importation […] the sale for importation and/or the sale within the United States after importation” of a number of infringing remanufactured and cloned aftermarket cartridges. Impression moved to dismiss claims and overturn Jazz Photo, which impacts on patent exhaustion, or the “first-sale doctrine”, influenced by the Supreme Court’s ruling in the Kirtsaeng case in 2013, which prevented copyright owners from stopping imports and reselling content sold abroad
The ruling in February decided that Impression “infringed the patent rights of Lexmark […] when it imported Lexmark’s toner products back into the United States after they were first sold abroad”, as well as that it was “liable for selling refurbished Lexmark cartridges that were originally marketed for a single use under its return and recycle programme”. Recently however, the US government backed an “overturn” of the decision, and “urged” the Supreme Court to review it.
WV Gazette Mail discussed the “small Charleston company” and spoke to President Eric Smith about the case, noting that Impression “could soon be defending itself before the Supreme Court”, Smith stating that “I think this is a very important case, and it affects everybody. It just so happens that a small West Virginia company was caught in the middle of it”. He added that the government’s intervention “doesn’t guarantee” a Supreme Court case, but “sharply increases the probability of it happening”.
The site notes that “what has given the case national attention is the question of if the first-sale doctrine applies to products that were bought outside the United States”, with “wide-reaching implications for numerous corporate giants” including Samsung and Google, who have “foreign supply chains that would have to jump through additional hoops if the first-sale doctrine did not apply for foreign purchases”.
Conversely, pharmaceutical companies like Pfizer “have supported Lexmark, with a Lexmark victory likely giving their own patents greater protection”. Smith noted that Lexmark has “threatened other small companies in Impression Products’ situation in the past”, but “believes his company is in the right”, adding “I never thought I would be in this situation. I just didn’t agree with what Lexmark wanted to do. They went after a lot of companies like ours in a couple of other states”.
The site contacted Lexmark which “did not respond to interview requests”, and added that Impression “is represented by Mayer Brown LLP and Avyno Law P”, while Lexmark is represented by “Sidley Austin LLP, Banner & Witcoff Ltd. and Stoll Keenon Ogden PLLC”.