Comment by mbreese | Hacker News Reader

Comment by mbreese | Hacker News Reader

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Yes, assuming the contract was valid. Lexmark could in that case sue their customers that sent cartridges to a re-manufacturer. The only one with a relationship with Lexmark is their customer, so that's the only entity they could sue. (However, given that this isn't a case involving Lexmark and a customer, the court didn't rule on that contract, just acknowledges the possibility.)

"If the patentee negotiates a contract restricting the purchaser’s right to use or resell the item, it may be able to enforce that restriction as a matter of contract law, but may not do so through a patent infringement lawsuit."

Although, this brings up an interesting idea, which may be the logical conclusion to all of this. The patentable parts at play here are in the cartridge, and it was the sale of that that exhausted their patent rights. Now if Lexmark decided that it was only going to sell you the toner, but maintained ownership of the cartridge, then they'd be able to sue any re-manufacturer, regardless of their source (domestic vs abroad end users). Because (a) it would be patent infringement and (b) it would be selling stolen goods.

Instead of selling it, why not just lease it? They would then retain ownership and could very well claim theft if another company attempted to refill it and sell it.

Shouldn't they be able to structure their lease agreement as a 1 time payment and 100 year term or something?

If I lease a car, someone else can't repaint it and sell it legally.

Or they could set up their own cartridge recycling plant, retain ownership of the cartridges themselves, and charge a reasonable fee to refill the cartridges.

If a customer chooses not to have a cartridge refilled but would rather buy a new one, the customer just returns the cartridge to a recycling point.

Sort of like beer bottles in the UK half a century ago. The bottles and crate remained the property of the brewery and you returned them to claim your deposit back.

Lexmark could sue the re-manufacturer for tortious interference claiming they are encouraging Lexmark's customers to violate their contracts with them thus financially harming Lexmark.

Maybe, but the remanufacturer would argue back that they didn't take ownership of the cartridge, they just added toner which never transferred ownership.

When I take my car in for an oil change, the shop doesn't take ownership for an hour...

They also don't sell your car to another person...

Its not quite analogous

True. A "refill while you wait" service would be analogous, however.

And one could make an argument that, since printer cartridges are more fungible, the difference matters for cars but not for printer cartridges. IANAL, so I don't know if it makes any legal difference.

A sibling post about beer is also interesting. Beer kegs are owned by the brewery -- you buy the beer inside the kegs and you must return the keg. However, it is common for (very) small breweries to refill kegs that aren't theirs. If you buy a keg of beer from brewery A, drink the beer, take the keg to brewery B and ask them to fill it, they often will (if they have time).

Usually, there is a clause in the agreement with the brewery that owns the keg that you will not refill it. However, that's a contract with the customer, not the competing brewery and as far as I know, it is not illegal for the second brewery to refill them (but the customer can be sued).

Let's say the original brewery has a patent on the keg in question. Normally you would not be able to use the keg because you do not have a license to the patent. I think the interesting point here is that if the original brewery retains ownership of the keg, then the second brewery can not refill the keg without infringing on the patent. However, if the brewery sells the keg to the customer, then the customer sells the keg to the second brewery -- the patent is exhausted (in the opinion of given in the link). So the brewery can fill the keg because they own it.

To be honest, while I think a sane law would work this way, I'll bet this is trickier than it seems. Let's say you have a special filling mechanism on the keg that is patented. You can sell the keg to the user. The user can use the keg for it's intended purpose (to dispense beer). The user can then sell the keg (either full or empty) for its intended purpose (to dispense beer). However, they can explicitly say, "We do not transfer the patent rights for filling this keg using our patented filling system". The user signs an agreement stating that they understand that the keg can not be refilled and that they have not bought the rights to the filling system.

In that case, when they resell the keg, how can the patent rights be exhausted? The customer never bought them in the first place.

So I expect SCOTUS will rule against this (unfortunately).

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