EFF petitions SCOTUS over ‘troubling’ patent exhaustion ruling
The Electronic Frontier Foundation (EFF) has urged the US Supreme Court to hear and overturn a “troubling decision” handed down by an appeals court that centres on patent exhaustion.
In an amicus brief filed yesterday, April 20, the EFF intervened in the Impression Products v Lexmark International dispute.
According to the brief, filed in support of Impression Products, the ruling handed down by the US Court of Appeals for the Federal Circuit earlier this year “undermines centuries of law” upholding the right of individuals to use and re-sell their possessions.
In its judgment the federal circuit sided with Lexmark and said Impression Products had infringed its patents by selling modified products that were obtained abroad before being imported to and sold in the US.
The court added that a patent owner can impose re-sale restrictions on a protected product.
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. The microchip controls the cartridge’s communication to the printer so that it cannot be used again.
The discounted chips are sold under a no re-sale restriction by Lexmark.
Impression obtained the cartridges and imported them into the US.
Lexmark 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.
A mixed ruling from the Ohio court prompted both parties to appeal to the federal circuit.
In a 10-2 decision, the court sided with Lexmark and ruled that the sale of a patented product abroad does not exhaust a party’s rights.
The EFF’s brief said that allowing patent owners to control goods even after sale “harms liberty and autonomy”.
“Patent owners like Lexmark (which tries to impose one-use-only limits on its ink cartridges) could try to restrict otherwise legal modifications, add-ons, re-sale, reverse-engineering, and security research,” it added.
