Lexmark International, Inc. v. Impression Products, Inc.
United States Court of Appeals for the Federal Circuit
816 F.3d 721 (2016)
Lexmark (plaintiff) sold two versions of its printer toner cartridges: Regular cartridges, refillable and reusable at full price, and Return-Program cartridges, sold at a 20 percent discount but requiring return to Lexmark after a single use. Impression Products and other companies (defendants) acquired, refilled, and resold used Return-Program cartridges to Lexmark printer owners despite the single-use restriction. Lexmark sued for infringement, and the defendants argued patent exhaustion invalidated Lexmark's single-use restriction, relying on an argument that Mallinckrodt v. Medipart, which had upheld similar single-use restrictions, was no longer good law. The district court agreed with the defendants and dismissed Lexmark's claims; Lexmark appealed.
Whether, under the doctrine of patent exhaustion, a patent holder may place a post-sale reuse or resale restriction on an authorized sale of the patented item so long as the restriction is not anti-competitive or against public policy.