Edition 83
Supreme Court Ruling On Reuse of Products Now the Law of the Land
by Kyle Wiens, CEO, iFixit

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The Supreme Court just affirmed your “right to refill” an empty printer cartridge. Yes, I know—a tiff over toner seems pretty trivial to bring to the nation’s highest court. But the ruling is actually a huge win for folks like us in the business of repairing, recycling, and refurbishing products.

Here’s how the printer pickle started: Lexmark sells two different kinds of cartridges—one that is refillable and one that is not. Of course, those two cartridges are essentially the same cartridge. Except the non-refillable ones cost less and have a chip that disables the cartridge if you refill it. Lexmark also levied a post-sale restriction against the single-use cartridge, mandating that owners not reuse or transfer the product to another person. Under the restriction, only Lexmark would be allowed to collect, refill, and resell their un-refillable cartridges.

But things didn’t exactly work out that way. Companies like Impression Products collected empty cartridges, bypassed the chip, refilled the cartridges, and resold the product to consumers. So long, single-use. Hello, use-as-many-times-as-you-want. Lexmark didn’t like that—and in the early 2010s, they started suing resellers for patent infringement.

Impression—a small, family-run company in West Virginia—was the only business that fought back against the printing giant. Once Lexmark sold the cartridges to a customer, Impression’s CEO argued, they exhausted the patent claim. Lexmark shouldn’t be able to stop third-parties from reselling a used cartridge, anymore than a publisher should be allowed to ban a book store from selling used copies of The DaVinci Code.

The case slowly made its way up the Supreme Court, where the Justices heard arguments earlier this year. The Supreme Court considered two main issues: (1) whether Impression could recycle the cartridges without authorization, given Lexmark’s single-use restrictions and (2) whether Lexmark could enforce its patent claims on products that have been sold abroad and then imported to the US. Many allies of RLA weighed in on Impression’s behalf with Amicus curiae briefs, including Repair.org.

This month, the Supreme Court ruled against Lexmark on both counts. It didn’t matter where the product was sold or what sort of restriction Lexmark put on the original customer—Impression Products didn’t violate patent law when it refurbished empty toner cartridges. The Supreme Court held that Lexmark exhausted its patent rights when it sold its cartridges to consumers, “regardless of any restrictions the patentee purports to impose.”

But what does any of that have to do with businesses outside of the office supply industry? As it turns out, a lot. The Supreme Court didn’t just affirm the rights of people who prefer cheap toner—it affirmed the rights of businesses in the aftermarket. The decision means companies can’t be sued for patent infringement if they repair, resell, recycle, or refurbish a product without the original manufacturer’s authorization. Because the aftermarket is an important, legitimate part of the economy.

As Chief Justice John Roberts put it, “Take a shop that restores and sells used cars. The business works because the shop can rest assured that, so long as those bringing in the cars own them, the shop is free to repair and resell those vehicles. That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale.” The same could be said of the companies who refurbish and resell complex products like electronics—which are subject to countless patents.

It comes down to this: Under patent law, Lexmark can’t dictate what you do with a product. You bought it. You own it. You get to decide what to do with it. You can resell it, recycle it, refurbish it, and repair it. You can even refill it. And thanks to the Supreme Court (and its similar 2013 verdict in Kirtsaeng v. Wiley), your right to do so is now the law of the land.
Kyle Wiens is CEO of iFixit and Chairman of Repair.org. iFixit is the largest online repair guide and online parts retailer. Repair.org is the repair association, moving the repair industry forward and protecting your right to repair.

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