Recently, in Lexmark v. Impression, the Federal Circuit took the unusual step of issuing a sua sponte order for an en banc hearing to consider, among other issues, whether “[i]n light of Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351 (2012), should this court overrule Jazz Photo v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001), to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion.” This case raises the important question of the relationship between U.S. copyright and patent laws, as well as how a patentee’s statutory exclusive right to bar unauthorized imports should be interpreted.
Impression’s Importation of Lexmark’s Toner Cartridges. Lexmark is a major manufacturer of laser printers and toner cartridges, products which are protected by many patents. Lexmark’s profits are earned largely from the sale of toner cartridges, which must be purchased to replace the empty cartridges that come with Lexmark’s printers. Impression purchases empty cartridges, both in the United States and overseas, remanufactures the cartridges so that they may be used again, and sells them in the United States.
