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Lexmark International, Inc. v. Impression Products, Inc.

United States Court of Appeals for the Federal Circuit
816 F.3d 721 (2016)


Lexmark International, Inc. (Lexmark) (plaintiff) manufactured and sold printers and toner cartridges. Lexmark sold two types of toner cartridges for use in Lexmark’s printers: Regular and Return-Program. Regular cartridges could be refilled and reused by purchasers. Return-Program cartridges could be purchased at a 20 percent discount, but had to be returned to Lexmark after a single use. Impression Products, Inc. and other companies (defendants) acquired and refilled used Return-Program cartridges. The defendants then resold the used Return-Program cartridges to users of Lexmark printers. Lexmark sued the defendants for infringement, arguing that the Return-Program cartridges were sold with a clear restriction on their reuse. The defendants argued that because of the doctrine of patent exhaustion, Lexmark’s single-use restriction on its Return-Program cartridges was invalid. In support of their position, the defendants argued that Mallinckrodt v. Medipart, 976 F.2d 700 (1992), which held that a patentee’s single-use restrictions on the post-sale use of a product were valid, was no longer good law. The district court agreed and dismissed Lexmark’s infringement claims. Lexmark appealed.

Rule of Law


Holding and Reasoning (Taranto, J.)

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