Impression Products, Inc. v. Lexmark International, Inc.
United States Supreme Court
137 S. Ct. 1523 (2017)
Lexmark (plaintiff) sold discounted Return-Program toner cartridges under an express single-use-only condition requiring return after one use, as opposed to its full-price regular cartridges buyers could freely refill; Impression Products (defendant) acquired, refilled, and resold used Return-Program cartridges to Lexmark printer owners, prompting Lexmark to sue for patent infringement. Impression argued patent exhaustion invalidated Lexmark's single-use restriction, relying on the argument that Mallinckrodt, which had upheld such postsale restrictions, was no longer good law; the district court agreed and dismissed Lexmark's claim, the Federal Circuit reversed relying on Mallinckrodt, and the Supreme Court granted certiorari.
Whether, under the patent-exhaustion doctrine, a patent holder may place a postsale reuse or resale restriction on an authorized sale of a patented item and enforce that restriction through a patent infringement suit.