Return the Empty Cartridges! — Federal Circuit to Hear Patent Exhaustion Case En Banc

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By Don Wang

All you patent law nerds out there, grab your popcorn! The next blockbuster case you have been waiting for is about to hit the courts. On April 14, 2015, the Federal Circuit, on its own motion, ordered an en banc hearing of Lexmark International v. Impression Products, Inc.. In this patent infringement case, the Federal Circuit will decide whether it will overturn two of its own precedents on the patent exhaustion doctrine.

The plaintiff-patentee in this case is the printer manufacturer Lexmark, and the products-in-suit are Lexmark’s patent-protected toner cartridges. Lexmark offers the same cartridges through two separate programs: “Regular Program” cartridges at full price and “Return Program” cartridges at a discount. Customers of the Return Program must agree to use the cartridges only once and return them after use. Lexmark contractually imposes such restrictions on both the end-user consumers and the authorized resellers. In the current suit, Lexmark alleged that Impression Products, among other cartridges resellers, infringed its patents by acquiring, refilling, and selling refurbished cartridges under Lexmark’s Return Program. Continue reading