dny59-istockphoto-com-gavel-
27 February 2017Patents

Plantronics files amicus brief in patent exhaustion suit

US-based electronics company Plantronics has filed an amicus brief in a patent exhaustion suit between Impression Products and Lexmark at the US Supreme Court.

Lexmark had sued Impression at the US District Court for the Southern District of Ohio for patent infringement. In a counterclaim, Impression said Lexmark’s patent rights had been exhausted.

Lexmark manufactures laser printers and imaging products.

Impression Products, based in Charleston, West Virginia, sells printer cartridges and printers.

A mixed ruling from the Southern District of Ohio meant both parties appealed against the decision at the US Court of Appeals for the Federal Circuit.

In February last year, WIPR  reported that the Federal Circuit ruled that a US patent owner’s rights are not exhausted when a protected product is sold outside the country’s borders.

The Federal Circuit ruled that Impression Products had infringed Lexmark’s patents by selling modified products that were obtained abroad before being imported to and sold in the US.

Lexmark sells refillable printer cartridges both in the US and internationally. For a discounted rate, customers can buy a cartridge containing a microchip that restricts users from re-filling the cartridge with ink when empty.

In March this year, the Supreme Court is due to answer in this case “whether a ‘conditional sale’ that transfers title to the patented item while specifying post-sale restrictions on the article’s use or re-sale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy”.

The court will also answer whether, in light of its holding in Kirtsaeng v John Wiley & Sons, a sale of a patented article—authorised by the US patentee—that takes place outside the US exhausts the US patent rights in that article.

On February 23, Plantronics filed an amicus brief that addressed the second question that the Supreme Court will answer.

It said that grey goods undermine an innovator’s ability to control the quality of its products.

“Grey goods harm Plantronics, harm its partnerships, and harm its customers, much as they harm other innovators,” the suit said.

Plantronics added that allowing international patent exhaustion due to foreign sales would devalue US patents by “destroying the geographical nature” of them.

The electronics company said the court should not overrule the status quo and permit the authorised sale of products in foreign jurisdictions to exhaust US patent rights.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
16 February 2016   A US patent owner’s rights are not exhausted when a protected product is sold outside the country’s borders, the US Court of Appeals for the Federal Circuit has ruled.
Patents
21 April 2016   The Electronic Frontier Foundation has urged the US Supreme Court to hear and overturn a “troubling decision” handed down by an appeals court that centres on patent exhaustion.