Intellectual property rights are important as they enable business owners to protect their original work (DuBoff, 2004). Notably, these rights protect a company’s identification marks thereby, forming an essential part of the branding process. The federal and state courts have crafted various precedence in law suits to affirm the rights that are necessary for an entrepreneur to have resources and protection regarding their ideas and services. However, when they are compromised, the party affected is obliged to file a law suit, (Grimsley, & Riewerts, 2010).
Impression Products, Inc. v. Lexmark International, Inc
The petitioner, in this case, was Impression Product, Inc while the respondent was Lexmark International Inc and the location being Lexmark International Corporate Headquarters. The case was granted on 2nd December 2016 and argued on the 21st March 2017. A decision was made on 30th May 2017 by Supreme Court of the United States. Notably, the advocate present for the petitioner was Andrew J. Pincus while that of the respondent was Constantine L.Trela, Jr. In addition, there was Malcolm L. Stewart for the United States, as the amicus curiae (Impression Products, Inc. v. Lexmark International, Inc., n.d.).
Delegate your assignment to our experts and they will do the rest.
Background of the Problem
Over the years, Lexmark International, Inc has owned several patents which are used for its “printer toner cartridges” (Impression Products, Inc. v. Lexmark International, Inc., n.d.). A client is allowed to buy their cartridges under the ‘Return Program’ whereby; the client gets a single-use patent as well as a contract license. However, for this transaction, there is an agreement that, the product is sold to the client at a discounted price, and they should return it to the company after using it once.
Impression had acquired the cartridges of this company from a third party which had physically changed the product to enable a re-use on it. Notably, this was in violation of the single use - Return Program of Lexmark Company (Impression Products, Inc. v. Lexmark International, Inc., n.d.). The Impression Company had acquired the products abroad and then sold them in the US. Thus Lexmark had sued them for infringing on their patents without authorization from Lexmark to resell or reuse. As such, Impression argued that by selling the product, Lexmark transferred the title thereby granting them a requisite authority.
The main disagreement, in this case, was Lexmark claims that the petitioner had infringed on the patent rights by reusing and reselling the cartridges without authorization. Impression argued that they had a right to reuse and resell as the “patent-holder’s right” was exhausted when Lexmark sold the product (Impression Products, Inc. v. Lexmark International, Inc., n.d.).
Initially, the District Court had ruled in favour of Impression based on the above argument. The Court of Appeal reversed and affirmed in part this decision. It used the Patent Act which recognizes that once a patentee sold an item, all the rights were transferred to the new owner (Miller, & Cross, 2014). Thus, even though the product had restrictions on its use after the sale, the restriction was not enforceable under a patent law. However, authorization sale outside and inside the US triggered the ‘doctrine of exhaustion’ as the ‘common law doctrine’ did not have territorial limits thus reversing in part the decision (Impression Products, Inc. v. Lexmark International, Inc., n.d.).
Justice Ruth Bader dissented and concurred in part with the ruling citing that a foreign sale should not have exhausted Inventor’s patent rights in the US as the patent law is territorial (Impression Products, Inc. v. Lexmark International, Inc.. n.d.). Therefore, when a patentee wants to sell a product abroad, they ought to apply to the individual country for exclusive selling rights because the US patentee law did not follow the individual in the foreign land. Therefore, even the US patentee consequences should not have imposed on such cases.
I concur with the Supreme Court’s decision to reverse the case in part while still affirming the initial judgment in part. Lexmark’s foreign sales had not conferred authority to sell, import or use the cartridges, while at the same time “it did not waive Lexmark’s rights to its patent” (Impression Products, Inc. v. Lexmark International, Inc., n.d.).
References
DuBoff, L. D. (2004). The law (in plain English) for small business Naperville, IL: Sphinx Publishing.
Gimsley, K. S., & Riewerts, P. K. (2010). Does Your Business Have Intellectual Property to Protect CPA Prac Mgmt. F. , 6 , 12.
Impression Products, Inc. v. Lexmark International, Inc..(n.d.). Oyez . Retrieved September 14, 2017, retrieved from https://www.oyez.org/cases/2016/15-1189
Miller, R. L., & Cross, F. B. (2014). The legal environment of business: Text and cases – Ethical, regulatory, global, and corporate issues (9th ed.) . Mason, OH: South-Western.
