Venice, FL
August 25th, 2015
The Imaging Supplies Coalition has filed its own amicus, or friend of the court, brief with the US Court of the Appeals for the Federal Circuit (USFC). The amicus brief, prepared by highly regarded patent litigation attorney Mark Schonfeld, partner at Burns & Levinson, LLP, supports Lexmark in an ongoing case between Impression Products and Lexmark International over the patent exhaustion legal doctrine that define the rights of patent owners after a product has been first sold.
On April 14, a panel of 3 judges overseeing the case called for a rare en banc or full bench hearing of all 17 USFC judges. This case has the potential for a radical change to existing laws that impact a wide array of American industries. The full bench hearing, which will be held on October 2nd, will hear oral arguments from both sides, and will also consider the amicus briefs that have been submitted by various parties.
The Imaging Supplies Coalition’s brief strongly encourages the court to uphold existing case law that allows patent owners to prevent re-importation of their patented products into the U.S., if their goods were intended for sale and sold abroad. The brief provides both legal and policy rationales for this position. ISC members invest substantial resources and effort in researching and developing new technology for the imaging supplies industry and protecting this new technology through intellectual property rights. To protect these investments, ISC and its members must also spend significant resources fighting infringement. Because consumable imaging supplies and equipment are a repeat market with a ready supply of empty consumed units, infringers and arbitragers have relatively easy access to use patented goods to create an illegal aftermarket in imaging supplies. Consequently, OEMs in the imaging supplies industry must wage a constant battle against unauthorized and infringing activity to protect their valuable intellectual property rights, to maintain the goodwill associated with their brands, and to protect their consumers from inferior products that trade off the OEMs ’well-earned reputations.
Maintaining strong intellectual property rights and supporting enforcement activities of rights owners are crucial to the ISC’s mission. OEMs rely upon their patent rights in making important business decisions, including those related to: investments in research and development for new technology; global product availability and pricing; the structure of licensing agreements, including worldwide royalty payments; intellectual property ownership and portfolio management plans; and patent protection and enforcement, including anti- counterfeiting and gray market prevention. Accordingly, stable and uniform precedent regarding patent rights is important to the ISC, to its members and to the U.S. economy.
For these reasons, the ISC has submitted its brief as amicus curiae urging the USFC to uphold its precedent on the important issues defining the doctrine of patent exhaustion.
The Imaging Supplies Coalition (ISC) is a non-profit trade association comprised of original equipment manufacturers (OEMs) of consumable imaging supplies (ribbons, toner, inks, cartridges, etc.) and equipment that have joined together to protect their customers by combating illegal activities in the Imaging Supplies Industry. Coalition members include Brother International Corporation, Canon U.S.A., Inc., Epson America Inc., HP, Lexmark International, Inc., Samsung Electronics America, Inc., Toshiba America Business Solutions Inc. and Xerox Corporation.