LAS VEGAS - An order by the US Court of Appeals for the Federal Circuit (CAFC) on April 14 permits additional parties to file friend-of-the-court or amicus curiae briefs for a full bench hearing over the future of restrictive patent rights on printer cartridges.

This appeal in the ongoing case between Lexmark International and Impression Products over patent rights on printer cartridges has the potential to change the laws governing the cartridge remanufacturing industry and to impact many other industries in the USA.

In their April 14 order, the court called for a hearing by the full bench of 17 judges. Such en banchearings are rare. The US Department of Justice has been invited to file a brief expressing their view on the issues in what could become a landmark court decision. Other amicus briefs will also be entertained.  

After seeking legal opinion, RT Media?the publisher of the monthly, multi-language edition Recycling Times Magazine that focuses on aftermarket print consumables?will file an amicus brief of its own with the CAFC. To this end, Washington D.C.-based Merritt R. Blakeslee (pictured) has been engaged to prepare and submit a 15 page (maximum) brief to meet the June 5 deadline. Blakeslee has previously represented clients in three separate toner cartridge cases at the U.S. International Trade Commission. He has also worked closely with U.S. Customs and Border Protection to ensure imported remanufactured cartridges did not violate the 740 or 829 general exclusion orders.

Blakeslee believes that the strong policy rationale that underpins the patent exhaustion doctrine applies with equal force to U.S. and non-U.S. sales of a patented article. He told RT Media, ?Such an argument, seconded by the Kirtsaeng and common law arguments, would, I believe, give the CAFC a principled rationale for overruling Jazz Photo, which articulates the current state of the law of patent exhaustion.? Under Jazz Photo, a U.S. patent holder who first sells a patented article (like an OEM toner cartridge manufacturer) outside of the United States retains the right to bar the resale of that same article (for example, a remanufactured toner cartridge) within the United States. In contrast, if the same patent holder first sells the same patented article within the United States, it loses the right to dictate what happens to the article after that first sale.

Other amicus briefs are also being filed to support the position of Impression Products, which is represented by patent lawyer Ed O?Connor. The International Imaging Technology Council (I-ITC)?the peak industry body representing remanufacturers in North America?is working with its members to brief the other issue before the court ? whether a patent holder (again, for example, an OEM toner cartridge manufacturer) can defeat the patent exhaustion rule by placing conditions on the sale of its patented article. 

Amicus briefs are also expected from others that will support Lexmark?s position.

A full update will be provided by Blakeslee at the upcoming RT Imaging Summit being held in Las Vegas at the South Point Casino & Hotel on May 14 and 15. O?Connor is also speaking at the same event and representatives for the I-ITC are also attending.