Impression Products, Inc. v. Lexmark International, Inc.

137 S. Ct. 1523 (2017)

Quick Summary

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Impression Products, Inc. (defendant) was sued by Lexmark International, Inc. (plaintiff) for refilling and reselling patented toner cartridges. These cartridges were originally sold with a single-use restriction which Impression argued was invalid under the principle of patent exhaustion.

The dispute centered on whether Lexmark’s patent rights were exhausted upon sale, thus preventing them from enforcing post-sale restrictions through patent infringement lawsuits.

The Supreme Court held that Lexmark’s rights were indeed exhausted with respect to both domestic and international sales of its cartridges.

Facts of the Case

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Lexmark International, Inc. (plaintiff), a manufacturer of printers and toner cartridges, offered customers two types of toner cartridges: regular and Return-Program. The latter were sold at a discount with the condition that they be used only once and then returned to Lexmark.

Impression Products, Inc. (defendant) acquired used Return-Program cartridges, refilled them, and resold them. Lexmark sued Impression for patent infringement, claiming that the reuse of these cartridges violated the single-use restriction imposed at the point of sale.

Impression contended that Lexmark’s patent rights were exhausted upon the initial sale of the cartridges, rendering the single-use restriction unenforceable under patent law. The district court sided with Impression on the domestic cartridges but not on those sold abroad. The Federal Circuit Court reversed, upholding Lexmark’s restrictions and its right to sue for infringement on both domestically sold and imported cartridges.

Procedural Posture and History

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  1. Lexmark sued Impression for patent infringement concerning Return-Program cartridges.
  2. The district court dismissed the infringement claim for domestically sold cartridges but not for those sold abroad.
  3. The Federal Circuit Court reversed, upholding Lexmark’s restrictions on both sets of cartridges.
  4. Impression Products appealed to the Supreme Court of the United States.

I.R.A.C. Format

Issue

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  • Whether Lexmark’s sale of toner cartridges, subject to a single-use/no-resale restriction, exhausts its patent rights in those cartridges, disallowing patent infringement lawsuits against purchasers who refill and resell them.
  • Whether Lexmark’s patent rights are exhausted by the sale of its products outside the United States.

Rule of Law

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Under the doctrine of patent exhaustion, once a patented item has been sold, the patentee’s rights are exhausted, and they cannot control the use or resale of that item through patent laws. This includes any lawful restrictions the patentee attempts to impose on the purchaser post-sale.

Reasoning and Analysis

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The Supreme Court disagreed with the Federal Circuit’s analysis that exhaustion is merely a presumption about the authority that accompanies a sale. Instead, exhaustion is an inherent limit on the scope of the patentee’s rights. By selling an item, a patentee can no longer use patent laws to control that item.

The Court further reasoned that patent exhaustion applies regardless of any post-sale restrictions attempted by the patentee or whether the sale occurred domestically or internationally.

The Court upheld the principle that once a sale is made, any further control over the item is against public interest and trade practices. It emphasized that a patentee is rewarded for their invention through the initial sale and cannot demand continued payments or impose conditions on the use of the product once sold.

Conclusion

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The Supreme Court reversed the Federal Circuit’s decision, ruling that Lexmark’s patent rights were exhausted upon sale of the toner cartridges, both within the United States and internationally, thus precluding patent infringement suits against Impression Products for reselling them.

Dissenting Opinions

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Ginsburg, J., concurred in part and dissented in part, agreeing with the majority on domestic exhaustion but dissenting on international exhaustion, arguing that a foreign sale should not exhaust U.S. patent rights unless explicitly intended by the patent holder.

Key Takeaways

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  1. Once a patented item is sold, any further restrictions on its use or resale are unenforceable under patent law due to exhaustion of rights.
  2. The sale of patented items exhausts patent rights regardless of any post-sale restrictions imposed by the patentee.
  3. The doctrine of patent exhaustion applies to both domestic and international sales of patented items.

Relevant FAQs of this case

What legal principles govern the sale of patented products and the exhaustion of patent rights?

Under the principle of patent exhaustion, once a patented item is sold, the patent holder’s exclusive rights are exhausted. They can no longer control the use or resale of that item under patent laws, allowing the purchaser to use or sell the item without further restrictions from the patent holder.

  • For example: A company invents a new type of chair with a unique ergonomic design and patents it. Upon selling this chair, they cannot prevent buyers from later reselling it or modifying its ergonomic features for their own use.

Does the first sale doctrine apply internationally for patented items?

The first sale doctrine, also known as patent exhaustion, applies internationally as established by certain jurisdictions like the U.S. Supreme Court. Once a patented item is sold abroad by the patent holder or with their consent, they cannot enforce their U.S. patent rights to restrict its importation or subsequent sale within the U.S.

  • For example: If a smartphone patented in the United States is sold by the manufacturer in Europe, they cannot sue European buyers who then sell the phone in the U.S., because their patent rights were exhausted at the point of sale in Europe.

How do post-sale restrictions on patented products interact with patent exhaustion?

Post-sale restrictions on patented products, whether imposed contractually or through licensing agreements, generally do not circumvent the doctrine of patent exhaustion. Once an item covered by a patent is sold, the purchaser may generally ignore these restrictions without facing a claim of patent infringement.

  • For example: A software company sells a patented application with an end-user license agreement limiting installation to only three devices. Regardless of this restriction, after sale, they cannot bring a patent infringement suit against purchasers who install it on additional devices beyond what is stipulated in the license agreement.

References

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