By Tricia Judge

The International Imaging Technology Council (I- ITC) has been busy defending the industry against Lexmark’s Prebate program. Lexmark’s controversial program has been in the court system since 2002.The I-ITC announced that on November 19 they filed a friend-of-the-court brief with the U.S. Court of Appeals for the Federal Circuit in the case of Lexmark Int’l Inc v. Ink Technologies Printer Supplies.

Lexmark contends that it can require end-users to return their empty toner cartridges exclusively to Lexmark, and that it can hold violators accountable if the toner cartridges make their way to other companies such as environmentally-friendly toner cartridge remanufacturers.

According to the article by Tricia Judge, Executive Director of the I-ITC:

This is the fourth amicus brief filed by the Int’l ITC in support of free trade in imaging supplies.  The other three were filed with the U.S. Supreme Court level and are available to Int’l ITC members at “The Int’l ITC wants decision makers at all levels of government to know about the importance of our industry,” said Executive Director Tricia Judge.  “These briefs convince judges of the importance of a fair and open marketplace for imaging supplies.”

Patent law has a principle of patent “exhaustion” – sometimes called the “first sale” doctrine – that a patent owner who authorizes the sale of a patent product cannot impose post-sale patent restrictions on use or disposition of the product.  After an authorized sale, further use, resale, or repair/reconditioning of the product does not infringe patents embodied in the product.  In 2008, this principle was reaffirmed by the Supreme Court inQuanta Computer, Inc. v. LG Electronics, Inc.  Int’l ITC and two automotive industry remanufacturing associations submitted a friend of the Court brief in that case supporting that principle, as well.

However, Lexmark has continued to labels its toner cartridges (on the cartridge and on the outside of the box) with a “patent license” that purports to prevent purchasers from having the cartridge remanufactured or recycled by anyone but Lexmark.  Lexmark has sued dozens of remanufacturers for infringement claiming that the “license” avoids patent exhaustion.  Since Quanta, two district courts have sided with remanufacturers, finding that Lexmark’s authorized cartridge sales exhausted any patent rights against post-sale uses.  Lexmark is now appealing that issue to the Federal Circuit.

The case has serious import for all remanufacturing industries, and “robust commerce” in general.  Two automotive aftermarket associations joined in the brief; the Automotive Aftermarket Industry Association and the Automotive Parts Remanufacturer Association. “While the case in question relates to print cartridges, a failure to reaffirm the principle of patent exhaustion in this case could jeopardize the ability of Auto Care Association members to remanufacture and distribute remanufactured auto parts as well, according to Aaron Lowe, senior vice president for regulatory and legislative affairs for the Auto Care Association.  “The availability of remanufactured parts reduces the use of raw materials and provides an effective and affordable replacement option for car owners in the United States,” Lowe continued.

The Int’l ITC is the non-profit trade association that represents remanufacturers and recyclers of toner and inkjet cartridges, as well as their dealers. Printer cartridges are remanufactured when worn or exhausted parts are restored or replaced; and the final product performs like the original new one.  The Int’l ITC also administers the STMC quality program that certifies cartridge remanufacturers that achieve tested quality and performance. Toner and ink jet cartridge remanufacturing grew as a trade and now represents a $4.5 billion industry.

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