12 Judges Hear Oral Arguments Over Patent Rights on Cartridge Sales

The imaging industry has been waiting since June. However it was all over in an hour. On October 2, 12 judges sat for a historic full bench, “en banc” hearing over the ongoing patent right dispute between Lexmark International and Impression Products in Washington DC, USA.

The oral arguments can be easily downloaded and heard from the US Court of Appeal for the Federal Circuit (USCAFC) website or at bit.ly/CAFChearing. The Appeal number is 2014-1617.

The case between cartridge remanufacturer Impression Products, and OEM Lexmark, is over patent rights on the first sale of cartridges outside the USA (existing Jazz Photo patent law), and prebate cartridges sold inside the United States (existing Mallinckrodt patent law).

Patent attorney Ed O’Connor, representing Impression Products told RT Media that he gave 10 minutes of the time allocated to him, to Andy Pincus representing a consortium of companies including intel, LG and Ninestar. So O’Connor spoke for 10 minutes, Pincus spoke for 10, and the Solicitor General representing the government spoke for 10 minutes. Following Lexmark’s oral arguments O’Connor was given the last say with an opportunity for rebuttal with a final 10 minutes.

“I was first and last, and was able to make all my key points,” O’Connor says. I was able to make the point that the Kirtsaeng precedent is not just a copyright case and does determine the outcome of this patent law case.” He went on to read the relevant sentence from that case in his final remarks to the hearing. “And no-one challenged that,” O’Connor noted. “And based on that alone, I think we won the argument on the day. If there was anyone that felt they should challenge that, they would have said something.”

Tricia Judge, Executive Officer of the US-based International Imaging Technology Council (I-ITC) was present at the hearing along with attorneys Seth Greenstein and Skip London (pictured), who supported an amicus brief filed by the association in favor of Impression Products. According to Judge, some on the bench “appeared open to the cause of the aftermarket” but Ed O’Connor was “confronted with some prickly, if not hostile, questioning from some of the twelve judges hearing this matter.”

In Judge’s view, there was no clear winner. She quotes Skip London who responded, “See you at the U.S. Supreme Court”. Judge believes it’s “likely that the winner, loser, or even both, could take the federal circuit’s decision up on appeal to that august body.”  You can read her full report at www.i-itc.org.

O’Connor told RT Media the Federal Circuit has the jurisdiction and right to determine the final outcome in such patent disputes, and while it is not “likely”, it is “quite possible” that it could go to the Supreme Court.

O’Connor expects the judges deliberation on the October 2 hearing to take a few months with a decision to be made mid-January.

O’Connor will address the industry on the matter at the RT Imaging Summit in Zhuhai on October 15, during the RemaxWorld Expo at the Zhuhai International Convention and Exhibition Centre. Click here for more details and tickets to attend the summit.

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Please contact Violien Wu, Head of News & Editorial, via violien.wu@iRecyclingTimes.com