Lexmark and Disposability: Gumming Up the Market for Refills and Repairs.

by Dennis Crouch

I was surprised at the en banc Federal Circuit’s decision in Lexmark to re-affirm Mallinckrodt — giving a seller power to block future resale and reuse of a patented product.  My surprise is grounded in the longstanding tradition in American property law of promoting the free-flow of commerce by refusing to enforce servitudes that limit the alienation or use of goods. To be clear, courts have often enforced contracts between willing parties to this end, but those same courts have refused to allow restrictive covenants to cling to the good and bind any subsequent purchaser.  Here, the court held that this type of restriction is enforceable for Lexmark, but only because Lexmark’s product is covered by patent rights.

Apart from the law, the policy issues are incredibly important and relate to the continued increase in both (1) disposable/non-reparable products on the market and (2) manufacturer control over the repair market for products that are reparable by patenting the replacement part itself.  In the auto industry, insurance companies and consumers have been fighting this issue for years – pushing lawmakers to negate design patents covering spare-parts when used to limit the supply of less-expensive parts.

In my ideal system, we encourage the creation of high quality and long lasting goods that are reparable (or refillable) at a local level.  The best and most direct way to offer this encouragement is outside the patent system. However, the Lexmark decision gums-up the works by creating a cloud over the third-party repair/refill marketplace — a market that is already such a shadow of its former self.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

191 thoughts on “Lexmark and Disposability: Gumming Up the Market for Refills and Repairs.

  1. First, thank you for covering this topic. I have been in the printing and imaging industry for over 20 years, and nothing has kept the industries attention more than this case.

    To truely understand this case, however, I believe you have to understand the market, products offered, and the underlying drivers for Lexmark to levy this in the first place. I believe Lexmark started down this road many years when it was first feeling pressure from cheaper, locally remanufactured, consumables. At that time, they decided to offer a reduced price if the consumer would agree to return the empty toner back to Lexmark for recycling, and, yes, in some instances, recycling for re-use.

    At the consumer level, however, this was seem primrily as a cheaper consumable and never returned the empty to Lexmark when it was consumed. At about this same time, the Chinese manufactures began moulding and manufacturing counterfeit and “knock-off” products for sale into the US. This became so rampant, that, when Lexmark shopped 1000 e-tailers and retailers in the US, they saw a significant percentage of products being sold were actually never made by Lexmark in the first place.

    You can imaging the implications of this. How can patent rights ever be consumed, if the product was not manufactured, sold or endorsed by the patent owner in the first place.

    By upholding this ruling, the courts are doing 2 things:

    1 – It is NOT ok to make counterfeit products under any circumstances. This is upheld by understanding Lexmark’s rights to enforce that the product being remanufactured or repaired in the local market was first sold or manufactured by Lexmark.

    2 – It upholds the right to repair by not standing in the way of someone who wants to do so. Lexmark must allow the right to repair.

    I believe that anyone who learns all of the facts surrounding this case and really digs in, will see that the entire US economy benefits from this decision. Especialy the consumer.

    1. Jeff: Lexmark started down this road many years when it was first feeling pressure from cheaper, locally remanufactured, consumables.

      That “pressure” is also known as “competition.” It’s a fundamental aspect of capitalism, which is the most awesome -ism ever. In theory, consumers benefit when competition results in “cheaper locally remanufactured consumables.”

      Chinese manufactures began moulding and manufacturing counterfeit and “knock-off” products for sale into the US.

      Last time I checked, there’s a bunch of laws already in place to protect companies and consumers from counterfeit products.

    2. How would the consumer benefit?

      I had a Dell printer once where we bought a refilled ink cartridge. The Dell printer refused to work with the cartridge, so we threw the printer in the trash and never bought anything from Dell again. (And I do not remember ever seeing any “contract” with the printer that said I couldn’t buy refilled cartridges.)

      Now, when we buy a printer, we look at this issue and only buy printers that allow other printer cartridges to be used.

  2. Dennis, I’m sorry, but “your ideal world” ain’t the real world.

    Lexmark (and its customers) think that the best allocation of costs and profits is to price the printer low, and set higher prices on the printer cartridges. The “repair and replace” market for cartridges doesn’t exist unless the printers sell in the first place. Both parties evaluated the printer transaction before it took place, and decided that the printer with its life-of-product costs and benefits was beneficial to both parties.

    Why do so many academics think they know so much more about economics and business than the real world does? So much more about what’s good for the parties than the parties themselves knew?

    In the real world, essentially everything that happens happens for one reason–profits. Profits are not “gumming up” the system; profits are the fundamental motive force that makes the system work.

    Yes, the patent system has to balance an awful lot of different policy interests. Profitability of innovators isn’t the only interest to be considered. But I am constantly flabbergasted at the degree to which non-profit-sector academics simply brush aside the first requirement for every economic transaction–profitability. And the “revealed preferences” of the parties–they made clear that they liked the arrangement.

    1. Flabbergasted…?

      Really?

      This is nothing more than the Left-bias that (gasp) someone wants to make money and that just has to be “bad.”

      The double-Oh Noes of property not in the commune and making money on that property…

    2. A second observation —

      Ten years ago I used to represent one of the big photocopier companies. We used to get a lot of warranty claims from users that had used after-market toner cartridges that gummed up the printer, and ruined the printer.

      This is a perfectly rational way for Lexmark to protect itself from just the paperwork costs–let alone the hardware costs–imposed by substandard toner. Toner is really complex stuff, and the printer company has to have good quality control over the toner that gets loaded into the printer, at least if the printer company is going to offer a warranty.

        1. Anon —

          In the real world, there are two problems with that. (1) People lie on warranty claims. (2) The paperwork costs of warranty claims–even declining them –is very high.

          If the printer company is going to offer a warranty at all, they have to shut down this source of warranty claims.

          1. You run into the problem then of attempting a “real world” shortcut that impacts rights.

            Not every business shortcut in the real world is proper.

          2. Boundy In the real world, there are two problems with that. (1) People lie on warranty claims.

            LOLOLOLOL

            Thank goodness “in the real world” companies that own patents and sell products never ever mislead their customers.

            The paperwork costs of warranty claims–even declining them –is very high.

            And there’s no way to reduce that cost! Unpossible!

            If the printer company is going to offer a warranty at all, they have to shut down this source of warranty claims.

            Or they can cease to offer a warranty after the first cartridge expires because “people lie”. Or cease to offer any warranty at all. The huge amounts of money that are saved can be passed on to consumers in the form of a reduced cost for the printer, or passed on to shareholders, or both. It’s a win-win!

      1. Boundy: We used to get a lot of warranty claims from users that had used after-market toner cartridges that gummed up the printer, and ruined the printer.

        That seems like the world’s easiest problem to address.

        This is a perfectly rational way for Lexmark to protect itself from just the paperwork costs

        Nobody is suggesting that companies can’t void their warrantees if you use a replacement/refurbished component.

      2. One might exercise the right to create code and inplement such on a replacement chip which removes such limitation on refill-ability nonsense that appears to be a nuisance in a chattel to which they have gained title, and acting upon said right in the pursuit of one’s happiness, renders moot the original manufacturer’s fantasy about their business model in the wild. If Henry Ford had created a one-piece automobile that John Rockefeller’s fuel hose was unable to penetrate, but only by the Ford Trust filler hoses, we’d need to back-date and import the John Robert’s court to make that car go only on one-way corporate roads.

          1. Thank you. My classroom law education is comprised solely of attending every session of Apple v Samsung I and II where Quinn Emanuel kicked and a here’s shout-out to Bill Lee of WilmerHale. They were my professors along with Judge Lucy H. Koh.
            I could name the other stars at Quinn Emanuel; they know who they are and upon request… but brevity is the soul of wit and this plate is full.

    3. I just thought of how to put the problem in terms even an academic can appreciate —

      All of the interesting stuff in the patent system (in any intellectual property regime, actually) is within a “multi-period game.” In this case, the whole game includes initial concept, the cost of turning that idea into a product with reliability testing, marketing, manufacturing, distribution, then the sale of the printer, then the sale of the toner cartridge.

      The blinders-on Lemley/Drefus/Samuelson/Sarnoff/Rai “ideal world” academics try to optimize or reduce costs for one step in that chain, isolated from the entire multi-period game.

      1. Sorry David, I am not liking your analogy.

        First and foremost, the patent system itself is just not designed for that entire game.

        Adhering to your analogy too closely only invites the incorrect “must make” line of thinking into the game.

        That is just not how the U.S. patent system was devised – just not how the Quid Pro Quo deal is structured.

        1. I don’t understand — never heard of “must make” line of thinking so I don’t follow.

          Parties in a multi-period game have the option to not start — Lexmark didn’t have to make printers at all, and will only choose to do so if they see profitability as the end result of the end-to-end multi-period game. Is that the answer to your question?

          1. You just laid out a full “sequence” that includes the “positive” aspect of actually making a product.

            Patent law does NOT cover that full sequence – and is not intended to cover that full sequence (that’s why patent law is a negative right, not a positive right to practice)

              1. The specific, David, is that your full spectrum involves MORE than what the patent system aims for.

                There is no aim in the patent system that necessitates that a product be put into production.

                The patent right itself is not a right to produce anything – the positive right.

                Instead, the patent right is a negative right.

                I trust that this difference is understood by you – and that that understanding is specific enough.

                Your full spectrum plays into the hands of those that would like to make patent infringement into some type of business deal that excuses infringement as some type of de minimus infraction along the lines of simple broken contracts (efficient breach).

              2. Without some specificity, this comment is not helpful.

                It’s pretty simple, actually. Your earlier comment mentioned marketing, manufacturing, distribution, etc., and suggested that these things were somehow relevant to the patentee. That’s a big no-no in the orthodox religion of ultra-patent-maximalism, as practiced by anon, because we don’t want any hint of a suggestion that a patentee might actually practice its own invention.

                1. DanH,

                  Your spin is all wrong.

                  Whether someone decides to practice their invention is not something that I am all “up in arms about as am ultra-patent-maximalist.”

                  You want to have a product? Have at it.

                  But please understand that actual law and system of patents that the US put into place does not mandate that you have a product.

                  There is a H U G E difference here that your desire to be glib rather forgets to take into account.

                  You do no one any favors by overlooking this, and even worse – casting aspersions on the wrong party.

                  To be perfectly blunt: please stop trying so very hard to be an arse.

            1. anon —

              The patent system is tuned for the entire game, and has immense effect throughout the multi-period game, even though the overt effect operates at only a few isolated points.

              Analogy: products liability. Even though “the law” only “operates” where there’s a product failure that results in injury, the law of products liability is tuned to balance the obligation of the manufacturer to design and manufacture with due care, to allow the manufacturer to be in business, and obligate the purchaser to exercise due care.

              Similarly, even though the patent “law” only operates overtly in an infringement litigation, it affects, and is tuned to balance as best we can, the entire multi-period game.

              1. Tuned for the entire game is just not so, Mr. Boundy.

                There is NO requirement in patent law that one has to make a product.

                Until you can “tune” that, I am afraid that what you are hearing from yourself is out of tune.

                1. The patent law is so tuned, by not requiring practice of the invention. This has always been one of the available tuning parameters, and Congress chose to tune the patent system as it saw fit, by not adopting such a rule.

                  The Supreme Court came along in eBay and said that the probability of obtaining an injunction reflects whether patentee is practicing or nonpracticing.

                  The reason is simple–it’s an absurd rule. Universities, Elias Howe (inventor of the stitch that made sewing machines possible), Charles Goodyear, many of the inventors of the techniques that make modern cell phones possible, many of the biotech startups around me in Cambridge MA, are all non-practicing. Cell phones are an interesting example–an innovation that comes from a neutral non-practicing entity is far more acceptable to the equipment manufacturers, precisely because it comes from a neutral. But the innovation won’t happen if there’s no way to profit from it, and for non-manufacturers, a patent is the only way to obtain that profit.

                  1. That is 0xym0ron1c.

                    You want to say that it includes your entire spectrum specifically because US patent law has NEVER required the entire spectrum.

                    As my Boston friends say, “You cannot get there from here.”

                  2. ..and relying on Supreme Court decisions to “inject” policy is merely a sign of broken scoreboards….

                    That is NOT how the statutory law of patent law is designed.**

                    **with rare exceptions, as I have shared in the past, where the legislature appropriately has shared its designated constitutional authority.

                  3. No, I didn’t say that. I said that the patent system takes the factor into account, and has reached a balance that Congress considers appropriate, by treating practicing and nonpracticing inventors alike, except for probability of injunction. Lots of balances are included without a legal “requirement” at the precise point of operation–often there’s a provision that operates here that creates an incentive there.

                    Your comment on Supreme Court suggests that there’s enough lack of familiarity with American government that I’m not going to be able to teach you what you need to know to look at this in any sophisticated way. So I’ll stop here. Thanks for reading my post.

                  4. As I said, Mr. Boundy, I am not keen on your analogy because it is a flawed analogy.

                    You want to include more than the patent system in your analogy, when you just should not.

                    This is NOT to say that the patent system is the be all and end all of policy and the entire system of innovation (which has been defined in some innovation literature as having the additional steps of putting an invention into production).

                    All I am doing here is telling you that your analogy is flawed – and telling you exactly why it is flawed. The patent system – and the patent right – is just not what your analogy dictates it to be.

                    As to the Supreme Court broken scoreboard situation, I take it that you think that the Supreme Court can never be wrong – which I posit is wrong in and of itself. Let me remind you that the American Government – in its system of checks and balances and recognition of what is the supreme law of the land does NOT place the judicial system (and that includes the Supreme Court) ABOVE the Constitution.

                    It just is not so.

                2. There is NO requirement in patent law that one has to make a product.

                  Ding, ding, ding! There it is. I told you, David, even suggesting that a patentee might make a product is verboten.

                  1. Regarding working, working was a requirement in England. Bracha, Oren. Owning ideas: A history of Anglo-American intellectual property. Diss. Harvard Law School Cambridge, Massachusetts, 2005 at note 39. link to law.utexas.edu

                  2. “Working” as that legal term is understood in context here is not “meeting the stated functionality.”

                    It is more in line with having a product and putting that product on the market.

                    Even as DanH gleefully – and errantly – snipes at me for correctly stating the law and its history (great job there Prof – you need that pointed out to you explicitly too? – not as if you did not read this – as you read enough to edit out my response – more of that “delightful” lack of objective balance that I see as the “enforced rule” here), the concept of a patent right that is also a “must make product” simply does not reflect US patent law.

                    And there are plenty of good reasons why this is just not so, reflecting (among other things) the negative right nature of the patent (to contrast with the positive nature of having a product) and the fact that the US system is geared to improvement patents – and that such can be on items still protected under patent law to others, and that actually making might necessarily infringe on someone else’s (negative) rights.

                    And yet, my being clear about this brings out repeated – and thus what can only be taken as deliberate misstatements (and “go figure” – by the sAme ones that typically merely react against my posts without substance or care for the content of my posts).

        2. I’m puzzled by your statement “the patent system itself is just not designed for that entire game.” Can you please explain?

          The patent system has myriad policy balances, which exist precisely because of the multi-period, multi-party game. (Another important party in the game is the investor that puts up the capital to start the play.)

          The game was retuned by the AIA to favor big, multi-national market incumbents over other players, but it’s still a game whose rules attempt to take the entire game into account and optimize the global outcome.

          In what part of that do you believe otherwise?

    4. David, you are talking contract law. Dennis is talking property law.

      The suit here is against a third party not privy to any contract. The question is do they have title, because if they do, under the property law, they have it free from all restrictions on use or resale.

      Now Lexmark may void its warranty if its customers violate its terms, but that provides no legal excuse to sue a third party doing what it has a legal right to do.

      1. Ned Lexmark may void its warranty if its customers violate its terms

        Even a patent worshipping attorney like David Boundy should be able to understand that.

      2. Hi Ned,

        I happened upon this interview with Justice Kagan: link to youtube.com

        She spoke a couple times about the specialized practice, but go to minute 52. I think she speaks to what I was saying… its because they are good, but there is no special preference. She said earlier in the interview its more about circuit splits.

        1. Circuit splits was tried for nearly thirty years prior to the establishment of the CAFC.

          It did not work.

          Blindly going back and doing the same thing will yield the same result.

        2. While my point was more on, does a company basically have to pay for an expensive Supreme Court attorney, I’m happy to discuss this.

          I think that there are several issues with having a subject-matter court.

          First, I think there is an echo chamber effect and group think, which I think is overall a bad thing.

          Second, CAFC will reach into other areas of law that it is not its specialty, such as contracts, and tend to make Federal Common Law.

          Third, CAFC is put under the SCOTUS microscope more than other courts. SCOTUS usually waits until a circuit split, indeed some Justices do not vote for cert. unless there is a meaningful circuit split. But with CAFC, it can’t do that, making SCOTUS’s job harder in this area of law.

        3. J, She argued that the reason the former clerks are so effective at the cert stages is

          1. They are good lawyers; and
          2. They are given the best cert cases to begin with.

          She did mention that they also knew what buttons to push. (But of course, that is very important.)

          And she all but admitted that it was the quality of the lawyering that gets cert approved. Badly written or argued legal positions are not going to be accepted for cert.

          1. All that I agree with. But it is different than what you said, that they “trust their former clerks.”

            Going back, I pointed out that being a small company shouldn’t stop a business, after all that litigation to get to that point, from getting a good enough attorney to get cert if the law is on their side, ESPECIALLY if it is an appeal from CAFC.

            It seemed that the issue was that some lawyers, not accustomed to SCOTUS practice, do not adjust enough to what the justices are looking for. You don’t have to be a former clerk to make this adjustment.

            1. J, the most important people in the determination of whether your case even gets the attention of the justices are the clerks. It is they that have the biases in favor of their own kind.

              1. You say that based on, what? Former clerks are getting more grants of cert positions? Even if it were true, that can be explained by the fact that businesses are feeding more cases to those clerks.

                1. Well, J, I was told this by a former clerk of course.

                  Now Kagan says the court likes good lawyering. However, she also said that the court relies on its clerks for bringing to their attention petitions and amicus briefs they should read. Now, what about those clerks? Same thing, they like good lawyering. But they do not have the time to go check all the cites to see if they are accurate. So, this is where the trust issue comes in.

    5. Profits made between consenting parties are wonderful.

      Profits made on asymmetric information where one side can not be expected to reasonably consent are not wonderful.

      Daily consumers of printer ink are not generally understood to know the ins and outs of printer manufacturing economics. Cancer patients are not expected to comparison shop for chemotherapy drugs.

      Rent-seeking by manipulations of legal processes are frictional losses to an economy- like invalid patents and nonsensical invasion of patent law into the settled laws of commerce. Those rents may be profits, but they are far from virtuous.

      It’s often the academics who have the time, freedom, and interest in telling the rent-seekers and the public that they are full of it.

      Why do right wing zealots have such a problem understanding and accepting the concept of consent? Don’t answer that….

      1. I am pretty sure that David Boundy is not a right wing zealot.

        Why do left wing zealots feel the need to demonize their opponents?

        😉

        (also, to assume as you do that the Left academia do not bring their own agenda to the table is f00lishly p0llyanna – and then to accuse “full of it” is itself “full of it”)

        1. What is your point here Malcolm?

          Do you not agree with what I have stated?

          Do you want some other paradigm to be controlling?

          When you do nothing but make an empty snide comment, you only cement the fact that you are this site’s single largest blight.

          Nice “ecosystem,’ Prof.

        2. MM —

          re:favor big, multi-national market incumbents over the tr0lls I prefer to represent

          In every case I’ve been involved in, where there’s a big guy, or a multi-national, or a dominant market incumbent, or a tr0ll, on either side of the case, in every single one I’ve represented the defendant. If you google “David Boundy patent startup” you will see that I’ve been an advocate for the new market entrant or disruptive innovator in every one of my public statements. In my only current litigation matter, I’m representing a defendant against a troll.

          I hope you’ll understand that it’s highly unlikely that I will ever take you seriously enough to reply to you again.

          David

          1. Well Mr. Boundy, you can reply to make sport of him and show just how “off” his views are.

            He provides nearly unlimited material for doing so.

            😉

          2. Boundy: you will see that I’ve been an advocate for the new market entrant or disruptive innovator in every one of my public statements

            Oh, really? Are you advocating here on behalf of new companies that want to enter the market of providing refilled ink cartridges to consumers? If so, you could have fooled me.

            My point is that the purpose of the AIA — and the IPR and CBM regime in particular — was certainly not to “benefit big corporations” but to kneecap the worst abusers of the system. There is an important distinction between the two purposes, even if “big corporations” do, in fact, find some “benefit” from the changes. Small corporations will benefit as well. Characterizing the AIA as some sort of handout to big corporations at the expense of everyone else is the sort of ridiculous myth that patent maximalists love to repeat to themselves. It’s right up there with “everything is abstract and therefore ineligible”.

            In my only current litigation matter, I’m representing a defendant against a troll.

            That’s awesome! I hope you get rid of the case on summary judgment under 101. That’s another change that benefits everybody. Does it benefit “big corp” most of all? Probably. But that’s definitely beside the point.

            Lastly, this concept of “disruptive innovation” is some incredibly thin sauce. I understand it’s a trendy term among a certain class of patent-obsessive who think they are working on behalf of the Most Important People Ever. But beyond it’s seems to be mostly a pile of baloney.

              1. Ned,

                Get in touch with Ron Katznelson to help you gain the proper perspective on the so-called “Tr011” boogeyman.

                Then realize that the ends do not justify the means, so even IF the ends included “only ‘Tr011s’,” you STILL have to proceed by proper means.

              2. the effect might be kneecapping the trolls, but good patents whose validity has been sustained multiple times are being railroaded as well.

                The fact that patents generally would become marginally more difficult to enforce was a known outcome that was taken into consideration when the law was written.

                Good patents remain good patents. People are still licensing them. People are still asserting them when they are not licensed. And people are still profiting from them. This, too, was understood when the law was written.

              1. Ah yes – but the “balance” that consumers want – and a weakness in your stated position that I noted – is that the balance is not limited to innovators.

                Quite in fact, one of the primary reasons behind the Quid Pro Quo for limited times is that at a certain time, what was innovative belongs to the commons and SHOULD BE copied freely. A view that eliminates the benefits of non-innovation and copying is just not a complete view.

    6. David Boundy: the “revealed preferences” of the parties–they made clear that they liked the arrangement.

      I’m pretty sure that at least some of the parties that purchased the after-market toner cartridges at reduced cost also “liked that arrangement.”

      Of course, the mere fact that people “buy into” a marketing scheme like Lexmark’s doesn’t mean that “they like the arrangement” or that it’s an ideal arrangement or that the arrangement can’t be improved upon. That’s why people should always question the results provided by “the market.” It’s a mistake to presume that capitalism necessarily produces the best result for all the “parties”.

      I can’t imagine why so many profit-obsessed patent attorneys seem so inclined to forget that …

      1. Your focus on snark (and anti-capitalism) has forced you to miss a better comeback here, Malcolm.

        That better comeback is that the market actions (the emergence of the different providers of the replenishable product) have spoken directly AGAINST what Mr. Boundy has claimed.

        If what Mr. Boundy claimed were in fact true, the emerging market would not have gained the ground that it has.

        And to a certain not small extent, this same comment applies equally well to the rather polite post by Jeff at 13.

    7. David – Thanks for this comment. I certainly would not want to defend all academics. And here, I do not think that you fully understood my point. In particular, I am generally fine with this agreement between the parties regarding how the purchased goods can be used. My problem is how that agreement placing a servitude upon the chattel then gums-up the downstream market in a way that seemingly binds future purchasers of the good – even those that purchase without notice of the restriction on use.

      1. even those that purchase without notice of the restriction on use.

        Are you assuming that notice is not provided with the printer itself?

        I do not know the answer to this point, whether or not the printer itself highlights the options of the array of replenishables with any fair notice therein. But if I were the party engaging in such a “razor blade” model, and had the options available of more than one cost point based on single use or not, I sure as sh00ting would have that in the larger device as well as on the replenishable items.

      2. Dennis at 12.7 and Martin Snyder at 12.5 and Ned at 12.4:

        Why? Real property is often sold with restrictive covenants–view easements, homeowners’ association covenants, etc. Similarly, in the days of physical media, the physical copy of software was sold with the intellectual property encumbered by a license with lots of restrictions. Nothing wrong with that. Why should this be different? Lexmark sells the cartridge, the cartridge embodies IP, and the IP is supplied under a restrictive license. It’s an arrangement that puts the costs on the parties that derive the greatest benefit–it’s classic price discrimination by metering. It’s simply an efficient arrangement for allocating price and cost to those that use the most.

        These days, everyone with any knowledge of the real world knows that printers are cheap and ink is expensive. At least in the case of printers, “those without notice of the restriction” are so underinformed about the world in general that a “knowledge” requirement in order to sell the cartridges would “gum up” the market. What do you want, require a signature at the point of purchase for every cartridge sold rather than a notice on the wrap?

        1. David Boundy:
          Dennis at 12.7 and Martin Snyder at 12.5 and Ned at 12.4:
          Why? Real property is often sold with restrictive covenants–view easements, homeowners’ association covenants, etc.

          1. It is English common law that actually is American common law unless overridden by statute that restrictions on resale do not run with chattels. Even if real property may have restrictions that run from titleholder to titleholder, such is not the case with chattels and never has been. Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363-1364 (2013). As you know, the original exhaustion cases are based upon the general principle that the titleholder of the chattel receives it free of restrictions on use and resale and the patent laws must be so construed as well unless Congress expressly says otherwise.
          2. Bobbs-Merrill was based on the first sale doctrine. Ibid. That case specifically held that the right to vend did not extent to controlling second sales. It was exhausted on the first sale.
          3. Similarly, the patent laws have been so construed. There is no right to control second sales under the patent law.
          4. The attempted use of the patent laws to sue title holders of a chattel from reselling it, or repairing and then reselling it, have to be viewed, to me at least, as patent misuse that can and should affect the enforceability of the patents of concern, and might even be the basis of antitrust violations.

          Similarly, in the days of physical media, the physical copy of software was sold with the intellectual property encumbered by a license with lots of restrictions. N what the hell othing wrong with that. Why should this be different? Lexmark sells the cartridge, the cartridge embodies IP, and the IP is supplied under a restrictive license. It’s an arrangement that puts the costs on the parties that derive the greatest benefit–it’s classic price discrimination by metering. It’s simply an efficient arrangement for allocating price and cost to those that use the most.
          1. One cannot both sell a copy of software and also license it. The owner of a copy as a right to resell it. One cannot impose post-sale restrictions on the right to resell that copy based upon the copyright laws, or based upon the law of property.
          2. You assume that all these software licenses are effective even when the software owner is purporting to sell a copy of the software. At best what the software owner can do is condition his further services upon compliance with the software license terms and conditions. But nothing in the copyright law and nothing in the common law allows the software owner to impose post sale use or resale restrictions on the owner of a copy.
          3. Both Kirtsaeng and Bobbs-Merrill support the above.

          These days, everyone with any knowledge of the real world knows that printers are cheap and ink is expensive. At least in the case of printers, “those without notice of the restriction” are so underinformed about the world in general that a “knowledge” requirement in order to sell the cartridges would “gum up” the market. What do you want, require a signature at the point of purchase for every cartridge sold rather than a notice on the wrap?
          Long ago the Supreme Court decided that one cannot, under the patent laws, condition the sale of a patented item based the purchaser continuing to receive unpatented supplies from the patentee. That is patent misuse if not an antitrust violation.

        2. I’d declare enforcement be performed on a notarized signature on hard copy. Robo-signing by shrink-wrap removal is not even close. Here’s a class study of the corporate state business model meeting the global world jungle.

  3. I’m still not seeing the real issue with this case – we all “lease” our computer programs instead of buying them. Heck, you lease your Apple music and your amazon kindle e-books and your audible audio books. Those marketplaces have not collapsed.

    Is it unfortunate that true ownership is not transferred? Possibly. Is it unfortunate that a secondary market cannot rely on those distribution channels? To a limited sense, yes, only when that distribution is the ONLY means to keep the product (whether patented or copyrighted) available after the term lapses (less of a problem for patent law as for copyright law).

    Moreover, the potential for differentials in product pricing/openness could be a net positive in the long run.

    Substantively, I don’t think the Supreme Court’s case is really a problem. Like in so many areas of the law, the court will look at the substance of the transaction to determine its true legal standing. If the contract creates the proper allocation then it is lease (and post-sale restrictions will be enforceable and any violation of those will enable a breach of contract against the third party (which will never occur) and enforcement under copyright/patent law against third party); otherwise, it’s a sale and the sole recourse is a breach of contract claim (the sale having exhausted the patent/ copyright rights as against the third party).

    I digress. Talking Motion Pictures:
    “the owner of a patent is not authorized by either the letter or the purpose of the law to fix, by notice, the price at which a patented article must be sold after the first sale of it, declaring that the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put upon it.”
    discussing Bauer v. O’Donnell.

    It’s hard to jump from the negative (an unconditional sale – means exhaustion) to the positive (a conditional sale – means exhaustion).

    Ned, I note Holmes dissent: “Non debet, cui plus licet, quod minus est non licere” [He who is permitted to do the greater, may with greater reason do the less] looking to the patentee’s right to wholly withhold the patented product from the market and citing Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405.

    Any abusive or onerous restrictions on sale are subject to antitrust, not patent law (save the misuse doctrine).

    1. >I’m still not seeing the real issue with this case – we all “lease” our computer programs instead of buying them. Heck, you lease your Apple music and your amazon kindle e-books and your audible audio books. Those marketplaces have not collapsed.

      Not a good comparison at all; the markets are completely different, and you know that.

      >It’s hard to jump from the negative (an unconditional sale – means exhaustion) to the positive (a conditional sale – means exhaustion).

      Right, but I guess there might still be some ambiguity as to whether shrinkwrap licenses are in fact conditional sales (From what I’ve read, the Lexmark license is just printed on the outside of the box with open=accepting license language?). Any good law on this?

      From ProCD vs. Zeidenberg, it seems that click-through licenses are valid, but this seems to be grounded in the fact that to click through and “Agree” to the license presented to you.

      From my understanding, Lexmark simply has a simple shrinkwrap license, which wouldn’t have the forced-to-read-the-rules-then-agree, but I’m not aware of whether non-click-through shrinkwrap licenses are enforceable.

      Of course, ProCD vs. Zeidenberg might have been wrongly decided, too, so there is that.

      >Any abusive or onerous restrictions on sale are subject to antitrust, not patent law (save the misuse doctrine).

      I agree that the patent angle doesn’t seem the right way to approach this, I think it’s all whether the license is enforceable.

      1. patentcat,

        I beg to differ with your statement of “Not a good comparison at all; the markets are completely different, and you know that.

        There is NO law as to what the market is or how it must be approached. There are plenty of markets that have seen ingress of the “lease” model which were traditionally “buy” only.

        This distinction is a business decision and is just not constrained by your view of the situation.

        1. He made an argument based on false equivalence of different markets/products with different types of license agreements. I know that several markets have seen such an ingress, but to naively assume that because they use different types of licenses (click through) that *shrink-wrap* licenses are *necessarily* conditional sales (and that consumers understand this) is poor reasoning.

          This is, as you will notice, separate from the legal argument, which, at least in my mind, seems to hinge on whether the shrink wrap license is in fact a conditional sale.

        2. Zzz won’t post my comment.
          He made an argument based on false equivalence of different markets/products with different types of license agreements. I know that several markets have seen such an ingress, but to naively assume that because they use different types of licenses (click through) that *shrink-wrap* licenses are *necessarily* conditional sales (and that consumers understand this) is poor reasoning.

          This is, as you will notice, separate from the legal argument, which, at least in my mind, seems to hinge on whether the shrink wrap license is in fact a conditional sale

      2. Anon, drop by made an argument based on false equivalence of different markets/products with different types of license agreements. I know that several markets have seen such an ingress, but to naively assume that because they use different types of licenses (click through) that *shrink-wrap* licenses are *necessarily* conditional sales (and that consumers understand/acknowledge this) is poor reasoning.

        This is, as you will notice, separate from the legal argument, which, at least in my mind, seems to hinge on whether the shrink wrap license is in fact a conditional sale

    2. Drop by, calling something a lease when it is in fact the sale does not make it a lease. There is little about software licenses that are in fact enforceable licenses because they are, in point of fact, sales. Title passes, the seller loses all control. That is the law, and though it can be overridden by statutory law, no state or federal statute has done so.

      On post-sale restrictions, if title passes in chattels, the law is that the owner is not subject to any restrictions. So the only question is whether title passed.

      1. On the previous thread I opened a door for your comments on the “title” aspect in the seed situation….

        The parallel here would be for the originating deal to have a clause subjecting the buyer to install and put in any deal that that owner/lesee should make the same protective clause – as mentioned, this is already done in certain Copyleft software deals.

          1. Hence Ned, my multiple invitations to you to engage in the seed fact pattern that I have explicated.

            I find it odd that you are not all over the opportunity provided. Sure, I “get” that this impinges on the level of reverence that you hold for the Court, but the fact pattern that I laid out is not constrained by the less-than-full issues and parties that were discussed by the Court, and have impacts to the issues of this case (and to the larger issues of invention/ownership).

            1. Anon- I don’t understand what you are arguing about the Monsanto case and how it fits here.

              My understanding is that it has been distinguished based upon the fact that the newly-grown seeds were not the seeds sold but instead copies created by the farmer. Although an unrestricted sale exhausts all patent rights as to the actual article sold, it does not exhaust patent rights associated with the making of copies of the article.

              The major caveat here that the Supreme Court did not fully address was that the seeds are largely self-replicating (with the addition of soil,water,etc.) and their (disputed) intended use was making more seeds.

              1. Read all of my posts then Prof.

                I clearly lay out the particulars.

                And I too distinguish the first sold seeds from their progeny.

                It is very much the second and third sales – that are on their face unrestricted (leastwise to the purchaser at the time of purchase) that I point out.

                I further point out (and dispute the “disputed” point of intended use. That other uses exist is a smokescreen at best. As Dobu pointed out, one must look at the invention and gauge the sale from that vantage point. The invention ONLY has value in the use of “make,” and that particular use (for a seed) is a known and expected use. Combine the necessary view of when the invention has value (which is NOT for any other uses) and the LACK of control on post-first generation seeds when it comes to the original buyer being able to place those next gen seeds into the stream of commerce, and you have the plain takeaway that the Court in the Bowman case messed up.

                You ALSO have the very real problem (not expressed in the Bowman case – leastwise by the Court – but was expressed on these boards), that the mere act of selling the seeds by the grain silos MUST BE patent infringement if you are going to try to find that some residual sticks in the bundle remain after TWO unrestricted sales.

                Far too many of the sAme ones her do not bother to think of these necessary ramifications of finding some sticks still intact after TWO unrestricted sales with that known and expected use (and critically, that use tied TO the invention) of use = “make.”

                  1. LOL _ then read the ones on the three recent threads that speak to the issue

                    (guaranteed that the longer ones I posted that set the issue are less than 10 in number)

                1. Does it get us anywhere if we assume the following facts:

                2. Farmers who originally grew the seeds did so under a limited license that prohibited replanting.
                3. Granary bought the seeds the Farmers without any express restrictions on use (and the sale did not violate the contract).
                4. Bowman bought the seeds from the Granary without any restrictions on use.
                5. A recognized and intended use buying seeds from the Granary is for planting them.
                  1. Throw in as well the point made by Dobu: the sale chain is started and focused on the invention, which requires a use of “make.”

                    The drafter of that first sales contract (against whom mistakes are held against) simply did not draft the sales contract to fully protect the invention for which the product embodies. Further, any “argument” about the item being progeny falls short, as that first sales contract also covers – in a critically limited way – that very progeny.

              1. Thanks Ned – I think too that Dobu made a cogent point (too bad it goes against his Poisson).

                Dobu’s point was to look at the invention for which the product was sold.

                This alone makes clear that the other uses for gen eral seed are at best a smokescreen for the ONLY actual use for which the invention intersects: the use of “make.”

                As I also pointed out, Monsanto could have written their sales contract better to control THAT aspect in any progeny. They chose not to. Instead, they drafted their contract to prevent only the initial buyer to not replant the progeny side. They chose to place NO restrictions on the sale of the progeny seed, or any requirements that the first buyer must only enter into as equally strict sales agreements on the progeny seed.

                It was their mistake to let loose into the stream of commerce their (legally) uncontrolled product.

                1. lol – damm autocorrect – Poisson (similar to poison, which some contend is also what is happening – but not something I contend) should read “position.”

      2. Ned, I agree with you – that’s why under copyright the court will actually look at what the license says (it’s called a license, it has contractual terms that limit right to transfer), what controls are in place (e.g., authorization codes or, as in this case, hardware restrictions), collection/return infrastructure.

        I am saying the court will look to the substance of the transaction and say it is a lease because the patentee/lessor actually used/tried to use these controls. Otherwise, the court goes we don’t care if you called it a lease – it’s a sale.

        Doctrinally, we agree – a sale does not enable enforcement against third parties. Contrarywise, a lease means the transfer was “without the authorization” and therefore, any subsequent transfer is “without the authorization” (under Talking Motion Pictures) and infringing.

        I am saying the first step is where the true analysis lies.

        1. drop by, and thus we get to Dyk’s dissent. If title transfers, it is a sale. If not, it is not a sale but a conditional sale or a lease.

          When the patentee still owns the chattel, of court the possessor has nothing himself to sell.

        2. drop by, the problem the Federal Circuit has it that it either does not understand or does not care for the fundamentals of the law. It does not distinguish between legal and equitable title; it does not understand that laches does not apply to a legal remedy, that only a statute of limitation does; it does not understand that restrictions do not run with title to chattels like encumberances as with real property.

          The Supreme Court commented in a recent case it did not even understand the law of infringement, which is quite obvious.

          Occasionally it does get things right, probably when it is seeking to follow the law as opposed to seeking to justify the result that wants to achieve. One of those cases I think was well decided was In re Lockwood, a case it held that there was a Seventh Amendment right to a jury trial for validity in an infringement suit, or in a declaratory judgment action. Subsequent cases written by other panels have fallen back to a lack of understanding of the general principles and have gotten the results wrong. But that panel got it right and the opinion was written by Judge Michel. The same judge also got it right when he wrote the majority opinion in Bilski. It is a tragedy that Michel is no longer on the court.

          Most District Court judges that I have encountered are far better on the fundamental than the average Federal Circuit judge, probably because they have to deal with the fundamentals of the law on a day-to-day basis in court. I think we need more District Court judges to be elevated to the Federal Circuit rather than fewer

    3. Who leases their computer programs? I refuse to do so, which is the reason I also buy nothing from Apple — no music, no movies, nothing.

      I’ve even stopped buying ebooks, preferring to have an actual book instead.

      1. There is no reason to believe that the delivered content of any ebook is identical to the printed book in hand at once and forever if acid-free paper. The ebook is accessed by a unique login which may conceivably direct a peculiar version; and no man can completely guarantee that option will not be exercised. I’m thinking of government bond obligations World banking conferences viewing contract terms on their own delicious iPads, representing their sovereigns receiving nuanced versions of any particular text. The devil is in the details; trust the paper, sign the paper, file the paper. To hell with digital distraction and misdirection.

        1. Who can forget the snafu in which ebooks, bought and paid for, replete with notes and highlighting made by active readers, were nonetheless snatched from one’s reading devices without notice and removed by the vendor because the vendor had made some type of “boo-boo” in their dealings with their source?

          1. Not I, good sir, ebookery categorically ‘not in my house’, for Amazon is my digital river of denial; always becoming the patron/padrone of early 20th Century piecework.

  4. Prof Crouch,

    Take a long look at the comments on this thread that are nothing but ad hominem attacks on me.

    From the sAmeones that have NO interest on discussing the items of merit.

    This type ofC R P is what you have been allowing for a decade now – at the very least from the sAme poster that is Malcolm.

    When are we going to see your rules consistently, evenly, and objectively enforced?

    What kind of “ecosystem” do you really want to have?

    Your move.

    Just like it was four years ago when you had the exact same notice given to you.

    1. Take a long look at the comments on this thread that are nothing but ad hominem attacks on me.

      Is Dennis allowed to look at the other comments on this thread, or just those?

      LOL

      1. By all means he should – and should note the actual difference in meaningful content.

        All that you give is the same old tired and trite script.

        When (or if) the good professor is serious about wanting the “ecosystem” he says that he wants – and realizes just how long and how unmitigated the C R P is that you post, well, we shall see a real difference and the types of nonsense that are your stock in trade should be gone.

        But if he wants only others to stop the ad hominem – that’s just not going to happen and this thread is a perfect example of why is should NOT happen.

        His choice.

        As always.

        1. And the Echoes ring in….

          Those who “celebrate” the antics of Malcolm really should not piping in at this point – you are only making my case for me.

  5. Let’s say I patent product X.

    Hypothetical 1: Product X includes parts that wear out or break over time. In a continuation or in the same patent wherein I first disclose product X, I separately claim “A method, wherein said method comprises any step of replacing or repairing any part of product X.” Can I enforce that claim against a purchaser of the product, a third party hired by that purchaser, or a reseller of the purchased product? Assume that “any part” includes parts in the public domain.

    Hypothetical 2. Product X is designed to be filled with a substance that is depleted as the product is used. In a continuation or in the same patent wherein I first disclose product X, I separately claim “A method, wherein said method comprises any act that results in the refilling of product X.” Can I enforce that claim against a bona fide purchaser of product X who refills the product, or who hires a third party to refill the product? Assume that the substance in question is in the public domain, or that I have no patent on the substance.

    Hypothetical 3: In a continuation or in the same patent wherein I first diclosed product X, I separately claim “A method, wherein said method comprises selling product X.” Can I enforce that claim against a bona fide purchaser of product X who is selling the product?

    1. Plenty of dust kicking there, and the end result is your last claim of a method of selling, wherein the sum total of the method is selling a certain product…?

      And you accused me of strawmanning?

      WOW

      1. “anon” the end result is your last claim of a method of selling, wherein the sum total of the method is selling a certain product…?

        What about it, “anon”? Let everyone know if you have a problem with that kind of claim, and why.

      2. you accused me of strawmanning?

        Dang right I did. You’re the all-time master.

        The topic of the thread concerns ways of working around the problem of patent exhaustion (patent exhaustion, after all, is a limitation on patent rights).

        The CAFC has suggested that there is one possible way to do that (put a notice on the product that you can’t re-sell, repair or refill it without authorization). Perhaps there are others?

        1. Nothing but he same old Malcolm short script of AccuseOthersOfThatWhichMalcomDoes.

          “Love” all the dust kicking when you have ZERO to say of any merit on the issue that I explicated.

    2. In the facts of the Lexmark case, the refiller was actually removing the patented portion of the invention (the chip designed to detect a refill) and replacing it with a chip that would spoof the result.

      1. As I have noted Mr. Snyder, when the “repair” is merely a contrivance item that seeks to block the otherwise mere consumable replacement operation, you have left the realm of “pure” repair (and pure replenishable) and are facing a different question.

        But of course, you are going to pretend that you missed that point, right?

        1. Ned, see link to patentlyo.com

          “Each Return Program cartridge contains a computer chip that, among other things, enforces the single-use restriction. The chip monitors the cartridge’s toner level: once all the toner in a Return Program cartridge is consumed, the chip stores this fact in its memory. If the cartridge is later reinstalled, the chip will interact with the printer to disable the cartridge.

          Despite this protection, piracy threatens Lexmark’s cartridge sales. Third parties, including foreign companies, have hacked Lexmark’s computer chips and produced new versions that circumvent the single-use license. Those illegitimate chips, once installed in place of Lexmark’s originals, suppress the fact that the cartridge’s original toner was already consumed. This allows a used cartridge sold by a third party to masquerade as a genuine Lexmark cartridge. A Lexmark printer will accept the cartridge despite software designed to disable cartridges reused in violation of their single-use license.

          Once the chip is circumvented, Lexmark’s Return Program cartridges may be reused multiple times, in violation of the single-use restriction. “Remanufacturing” a spent toner cartridge for reuse involves replacing worn components and refilling the toner. Companies like Impression and its suppliers gather spent cartridges, install hacked replacement chips, refill the cartridges with non-Lexmark toner, and sell the refilled cartridges for use in Lexmark printers”

            1. Actually Ned, no it does not.

              The reading shows that their are multiple products and that the consumer’s decision based on price point merely includes alternative lease terms.

            1. We don’t know- the chips may be replaced with a physical circuit (hardware). We actually don’t know anything about the alleged infringement, because those facts were never reached in the litigation.

              I don’t actually see the chips implicated in any of the patents (likely because the method is anticipated or obvious)

              The patents in suit were:

              US 7,233,760 B2 Method And Device For Doctor Blade Retention 12/13/2004

              US 6,816,692 B1 Support Assembly For Roller Including Roller Body And Support Shaft 05/21/2003

              US 6,871,031 B2 Coupling Mechanism For A Two Piece Printer Cartridge 03/20/2003

              US 6,678,489 B1 Two Part Cartridges With Force Biasing By Printer 07/15/2002

              US 6,879,792 B2 Two Part Cartridges With Force Biasing By Printer 07/15/2002

              US 7,139,510 B2 Two Part Cartridges With Force Biasing By Printer 07/15/2002

              US 7,305,204 B2 Two Part Cartridges With Force Biasing By Printer 07/15/2002

              US 6,496,662 B1 Optical Toner Low Sensor 06/19/2002
              US 6,459,876 B1 Toner Cartridge 07/18/2001

              US 6,487,383 B2 Dynamic End Seal For Toner Development Unit 04/12/2001

              US 6,078,771 A1 Low Friction Doctor Blade 09/22/1999

              US 6,009,291 A1 Control Of Photosensitive Roller Movement 06/27/1997

              US 5,758,231 A1 Venting Plug In Toner Cartridge 12/20/1996

              US 5,758,233 A1 Toner Cartridge With Locating On
              Photoconductor Shaft 12/20/1996

              US 5,768,661 A1 Toner Cartridge With External Planar Installation Guides 12/20/1996

              US 5,802,432 A1 Toner Cartridge With Housing And Pin Construction 12/20/1996

              US 5,875,378 A1 Toner Cartridge With Hopper Exit Agitator 12/20/1996

              US 5,634,169 A1 Multiple Function Encoder Wheel For Cartridges Utilized In An Electrophotographic Output Device 02/16/1996

              US 5,995,772 A1 Imaging Apparatus Cartridge Including An Encoded Device 02/16/1996

              US 6,397,015 B2 Encoded Device Having Positioned Indicia For Use With A Toner Cartridge 02/16/1996

              US 5,337,032 A1 Reduced Component Toner Cartridge 02/26/1993

          1. Martin –

            This seems a bit confused, or at least it confuses me:

            “Despite this protection, piracy threatens Lexmark’s cartridge sales. Third parties, including foreign companies, have hacked Lexmark’s computer chips and produced new versions that circumvent the single-use license. Those illegitimate chips, once installed in place of Lexmark’s originals, suppress the fact that the cartridge’s original toner was already consumed. This allows a used cartridge sold by a third party to masquerade as a genuine Lexmark cartridge. A Lexmark printer will accept the cartridge despite software designed to disable cartridges reused in violation of their single-use license.”

            Are they selling chips that when installed in Lexmark original cartridges allow the originals to be refilled and used or are they simply selling other cartridges that work in Lexmark brand printers?

            1. Les I assume the defendants were refurbishing old Lexmark items and so the infringement is based on “making” and “selling” items covered by numerous patents. Apparently the chip itself was not covered by any patent but was essential to modify in order to operate the refurbished item. Its possible some parties were actually infringing by manufacturing knock-offs, which would obviously be the definition of the word “make” v. the highly debatable proposition that refilling them is “making” them anew.

              Lexmark went down the copyright road on the chip code, and I believe they lost in appeals court before they tried (so far successfully) to go down the patent road.

              I don’t think Monsanto v. Bowman is implicated at all here, because the seeds in Monsanto were clearly being “made” anew by re-growth.

              This just seems like a terribly policy oriented decision – the court trying to close what looks like a loophole thru a patent law lens when its really a contract / commerce law matter.

              1. On Monsanto, who makes the plant, the farmer or the seed? Who makes the seed, the farmer or the plant?

                Who owns the plant?

                A patent fish has a million offspring. Is that fish an infringer?

                1. Ned I think Bowman was a hard case. When Bowman culled out non-Roundup resistant plants by killing them with Roundup, he was in essence “making” a set of usable seeds. He was making the set from plants which in my view were entirely his property, since he bought them as a commodity already in the stream of commerce, but what he bought was not useful for his purpose until he practiced a method to make it so.

                  I think so long as he had to do the culling, he was “making” and thus infringing, but once essentially all of the seed in commerce was Roundup resistant, and that “making” step was no longer needed to create a useful batch of resistant seeds, Monsanto would no longer have an infringement claim.

                  Your fish hypo is simple; only persons can infringe a patent.

                  1. Mr. Synder,

                    You are aware that the chemical Round-Up itself went off patent and was fully in the public domain, right? You are aware that there was NO active method patent protecting the use of Round-Up, right?

                    Further, the use of “make” was all of a) well known, b) natural, and c) integral to the invention that was embodied in the first product sold without Monsanto perfecting its own written contract to protect the progeny.

                    Your views here are not in accord with the law, as you weave “new” concepts together in a seeming vacuum.

                  2. anon you are so doped up on showing off your putative erudition that you cant stop speed typing to consider what others are saying.

                    The act of culling the seeds is the “making” not of Roundup, nor of infringing a method related to using Roundup, but rather the making of a set of Roundup resistant seeds, which happens to be the patented product that Monsanto was selling, which gives rise to the infringement of THAT patent.

                    As to the weaving of concepts? Well….

                  3. Martin, actually the holding of the court was that the making and reselling of seed in excess of that which he bought was infringement. He could continue to plant and harvest soybeens all he wanted to so long as he did not sell soybeens in excess of what he bought in the first place. “But it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.”

                    This seems like a compromise decision that focused on the “injury” to Monsanto, while Bowman thought he has a right to do what he did, and he did if one only considered the common law.

                  4. Ned, “controlling the reproduction” was the “making” step that gave rise to infringement. He did so by culling the seeds. I think we are saying the same thing here.

                    As I said, Bowman was a hard case, unlike this silly printer ink ruling.

                  5. the making of a set of Roundup resistant seeds

                    Not an item of law – see Funk Brothers

                    Mr. Snyder, how was your rest last night at the Holiday Inn?

                  6. Just more nonsense anon. You really don’t like that an untrained person can reasonably engage in your little world, do you?

                    In any case, Funk Brothers means nothing to this line of comments. Who should I believe (again), you, or the plain words of the Supreme Court?

                    There is no eligibility question involved with Bowman or Lexmark. The question is what constitutes the making of an invention- the court said it was Bowman’s culling of the seeds. I assume in your derangement you just connected “seeds” with Funk…any Holiday Inn’s near you? Maybe you could use a stay…..

                  7. Mr. Snyder,

                    You are simply far too quick to label as “nonsense” that which you haven’t bothered to understand.

                    There is NO nonsense in my conversation with you.

                    None.

                    You keep on wanting to portray my view as something that it is not. As I have told you – I have NO problem with those that are not trained lawyers who can pick these types of things up and understand them.

                    You are not that type of person, because you have not yet shown that you understand these things.

                    That you do not see the link to FUnk just does not mean there is no link. (hint: Funk was pre 1952 and “invention” was very much at key there: the mere aggregation of what WAS has a direct link here to your post on the Monsanto case, because of what WAS was those things that Monsanto had failed to properly protect by contract and what Monsanto had allowed to be sold with no restraints into the stream of commerce.

                    Instead of merely reacting against whatever I post, I suggest (again) that you take these items that I post and discuss them with a real attorney (not on a blog).

                  8. Uh Huh. Monsanto’s extensive license program was a figment of the court’s imagination? An eligibility case from your pre-1952 fever dreams that was not even cited in Bowman is proof that I need a lawyer to understand plain language?

                    If a poll were held for regular readers of this site to rate the nonsense factor for regular commenters…..well anon, for once you would be a winner.

                  9. Nice strawman Mr. Snyder.

                    Uh Huh. Monsanto’s extensive license program was a figment of the court’s imagination?

                    I NEVER indicated that the extensive license program sis not exist.

                    But YOU have not paid attention to the words that I have used to describe that program – and the very real flaws that the program has in treating the progeny of the seed sold to those who agreed to the terms of that program.

                    Your “reliance” on some measure of popularity for what is and what is not “nonsense” is itself nonsense.

                    Thanks but no thanks.

                  10. Mr. Snyder,

                    An additional thought to your offering of “Monsanto’s extensive license program

                    As I have noted, the mistakes of a contract (outside of mutual mistake) are held against the drafter. So the fact that Monsanto HAD an extensive license program speaks even more to the fact that their mistake in not fully protecting themselves by limiting the progeny of what they first sold should be held against them.

                    It’s not as if they did not know how to do this – they did limit a second use of “make” of that selfsame progeny by those who entered the “extensive license program.” What they did not do though is limit the sale of that same progeny – allowing sales of a full and completely unfettered type to occur.

                    Do you recognize this point?
                    Do you recognize the traditional implications of this point?

                    Or are you going to see the word “anon” and shut down your critical thinking?

  6. OT, but Tania Simoncelli has a TED talk (Jan 2016) about the ACLU bringing the Myriad case. Lots of things in it to object to, but worth watching.

  7. Can I patent an “improved” product that is designed to fail in a predictable and predictably rapid fashion (faster than existing products) so that I can create and control a secondary market for replacement parts?

    1. MM, there is so much wrong with the Lexmark opinion that one really wonders where they get the gumption to defy the Supreme Court just once again. Are they delusional or just power mad?

    2. Why not?

      (I mean why not from a legal standpoint – clearly such a shenanigan in the real world probably wouldn’t make it off the shelves)

      1. clearly such a shenanigan in the real world probably wouldn’t make it off the shelves

        Does anybody else besides “anon” believe this?

        1. Hey, I am not saying that such cannot as a rule make it off the shelves – plenty of C R P makes it off the shelves without any type of patent protection (think pet rocks).

          But the point that you seem intent on missing (shockers) is that your comment lacks any type of cogent legal reasoning.

          1. your comment lacks any type of cogent legal reasoning.

            I asked a straightforward question and you responded with a question, a statement that I find incredible (which you immediately retracted) and an insult.

            The question is still out there. I don’t think the answer is as simple as you seem to think it is. Then again, your thoughts regarding pretty much anything aren’t worth two spits.

            1. LOL – your post was anything BUT straightforward – to the extent that I answered that particular question in a straight forward answer that you just simply did not like.

              Hence, you then turned and asked the convoluted question you had meant to ask at the top of the thread, a question that really is nothing but a strawman.

              The real insult here is that you think that all of this C R P from you is somehow not obvious. Sorry, pal, but your “feelings” are what are not worth those “two spits.”

              1. “anon” Hence, you then turned and asked the convoluted question

                LOL — seriously?

                Can you tell me what I had for lunch today or are your incredibly mindreading powers limited to blog comment analysis?

                1. Nothing “mindreading” about it.

                  Your ploy is obvious. Just look at the closeness in time stamps.

                  Plus, you just tried this same gambit on a recent thread. Why do you think this is not transparent?

                  1. “anon” Your ploy is obvious. Just look at the closeness in time stamps.

                    It’s like a combination of Sherlock Holmes and Dr. Phil, with the brains removed.

  8. MDT: If you can use a patent to stop someone from refilling an ink dispenser, what’s to stop someone from limiting how you refill a gas tank?

    Nothing. That’s one of the many reasons the Supreme Court is going to reverse the CAFC.

    Thankfully the Supreme Court stepped in a few years ago to remind people that you can’t use patents to create liability for thinking about when to refill your gas tank. That forced the True Believers to circle their wagons around the concept of using a proxy (a computer) to “determine” that sort of sooper techno stuff.

    And surely they’ll be loving this expansion as well. Promote the progress!

    1. concept of using a proxy (a computer) to

      LOL – that same old severe anthropomorphication affliction strikes Malcolm again.

      You do know that a machine is NOT a person and the legal doctrines protecting things totally in the mind are not reached by claims to machines, right?

      1. “anon” the legal doctrines protecting things totally in the mind are not reached by claims to machines

        Meanwhile back on planet earth, “anon” continues to be wrong about pretty much everything, to the extent his gibberish can even be parsed.

            1. Not any straw at all Malcolm.

              Are you saying that your attempt at obfuscating the anthropomorphication and apply to machines what carries as legal doctrines for humans is not in play with your comment at 6?

              Clearly it is.

              Just as clearly as in the past when you have attempted to move discussions of claims to be claims entirely in the mind.

              1. Are you saying that

                *click*

                Keep digging, “anon.” Nobody thinks you’re crazy! You’re a very serious person and everyone really cares about your deep insights.

                1. *click* Keep digging

                  Again the man clutching tight the shovel is telling someone else to keep digging.

                  You need new scripts, Malcolm.

  9. Anyone know of a representative Lexmark patent or two that covers the cartridges and their use? The majority just says “Lexmark owns a number of patents that cover its cartridges and their use.”

  10. Is there really any serious legal argument that merely replacing a depleted liquid that is expected to deplete in the normal use of a sold apparatus is not a “reconstruction?”

    P.S. Another face of basically the same economic and AT issues are the political fights over the [all too easy] obtaining of design patents on many replaceable parts of automobiles and using those design patents to attempt to enforce OEM sole-sourcing of those parts and hence monopoly pricing. It surprises me that more parts suppliers have not used IPRs on such design patents.

    1. Love the quotations marks, Paul…

      But a quick Google search shows that you are in the weeds and that there really is a serious legal argument that merely replacing something designed to be replaced through the normal use of the apparatus is NOT a “reconstruction:

      Reconstruction: a thing that has been rebuilt after being damaged or destroyed.

    2. My question to you would be the opposite: Is there really any serious legal argument that replacing a depleted liquid that is expected to deplete in the normal use of of a sold apparatus IS a “reconstruction” of part of the apparatus? Exactly what would one be “reconstructing” by replacing the liquid?

    3. Paul, on repair/replacement, the Court distinguishes “supplies.” If a part is consumed in normal use, its replacement is not a reconstruction. Example: toilet paper holder/rolls of toilet paper. A patent on the combination is not infringed by one who uses/supplies to toilet paper on rolls.

  11. I noticed too that costs were awarded to Lexmark. Isn’t that somewhat rare for the CAFC to do?

    Maybe Dr. Crouch is so exercised about this decision because of it’s seeming irrationality? The dissent is fairly “exhaustive” in showing how disconnected the decision is from Supreme Court precedent and common sense.

    This is a uniquely powerful court- combined with the recent cases on design patents, they are almost inviting political reform of the patent laws by creating intolerable conditions for businesses.

    Perhaps they know what they are about on that score….

  12. Ah, you don’t have to remove and replace your gas tank in order for you to put new gas in your car. By contrast, you have to remove and replace your ink cartridge in order to continue to use your printer. To me, these are useless hypotheticals (which is why no one responded before).

      1. You do have to remove the gas tank on a gas grill to put new gas in your grill. Additionally, if you are in a hurry, you need to replace the battery in your Tesla to get a recharge on the go.

        1. You do have to remove the gas tank on a gas grill to put new gas in your grill.

          An excellent example, as it shows the opposite of market forces shaping a management decision for product sales.

          For grills, the heightened level of risk, cost and complexity in shipping product complete with a pressurized combustible container presents an easy segmentation decision. Additionally, a different market of replenishables has emerged, and that market dictates that the connection not be one that is “locked out” either by physical or legal means.

          The printer business, on the other hand, has already embraced a different management paradigm: the razor blade model.

          With printers, there is a disproportionate profit margin on the initial device as compared to the margin on the replenishable.

          For my home, I have in fact simply bought NEW printers on occasion when a sale is running and the cost of new ink was greater than the cost of a new printed system, as happens frequently. The old and fully functional printer (note: expressly NOT in need of repair) is then donated to my local charity.

          Again – there should be a sense of clarity maintained between true repairs (and the repair market) and the replenishables market.

          1. I would add a note that the lack of “lock out” on the much more dangerous situation of gas grills rather puts to shame one of the arguments advanced by the not-dangerous industries that want lock-out capability to protect against the “threat” that a sub-standard replacement replenishable item would “hurt” the overall system provider.

            Such arguments are disingenuous to a substantial degree, as anyone knowing purchasing a “cheap” replenishable already knows that a subsequent “bad copy” does not “tarnish” the original system provider.

          2. “The old and fully functional printer (note: expressly NOT in need of repair) is then donated to my local charity.”

            For them to bear the costs of ink lol! Anon, the bestest philanthropist of our time.

            1. Seriously! And I bet he takes a tax deduction, too, despite admitting here that the “old and fully functional printer,” sans ink, actually has a negative value.

              That’s worse than Bill Clinton’s used underwear donation. At least someone could actually use that, if he (or she) was so inclined.

              1. A negative value for me does not mean a negative value for someone else.

                Besides, maybe they turn around at sell it for spare parts (for you know, actual repairs and all).

                So many you two “yuks-deliverers” want to take a stab at the substantive fact pattern I provided concerning the seed topic….?

                Yeah, thought so.

                  1. Malcolm,

                    Your absence from the substantive discussion goes without saying.

                    Not sure why you would find that so funny…

                1. Besides, maybe they turn around at sell it for spare parts (for you know, actual repairs and all).

                  Or maybe they chuck it in the trash.

                  So many you two “yuks-deliverers” want to take a stab at the substantive fact pattern I provided concerning the seed topic….?

                  The seed topic? Sorry, I ignore pretty much anything that brings up Bowman. That’s old news, and was never a particularly controversial decision. Wasn’t it 9-0? You can chatter all you like about “notice” and “exhaustion,” but neither of those issues have any relevance to the actual grounds of the Bowman decision.

                  1. There you go again, advertising that you are not thinking….

                    Maybe you want to change that before you post on these boards…

          3. fully functional

            Compared to what?

            there should be a sense of clarity maintained between true repairs (and the repair market) and the replenishables market.

            The degree to which that “clarity” is meaningful depends on the product in question. “Pllanned obsolescence” seems to be a common “management paradigm” these days. Where does that fit into your “true repair” universe?

  13. I asked this in the last post, but nobody answered. If you can use a patent to stop someone from refilling an ink dispenser, what’s to stop someone from limiting how you refill a gas tank?

    Hypothetical from the previous post…

    …My car has gas tank. That gas tank can be removed (I’ve worked on this before, it’s not a fun task, but it can be done). The tank is a solid distinct item, and can have patents on it.

    How would the ruling affect someone trying to say I could only buy my gas at 7-11 because of the patents on the gas tank fly? Some variations :

    1) Ford puts it in my lease documents.
    2) Ford puts it in my purchase contract.
    3) Ford doesn’t put it in either, but a 3rd party owning the patent says I can’t.

    1. Yes, MM, those are all possibilities within the patent system.

      What we’ve seen so far is some discretion by sellers, knowing that they don’t want to alienate a vast majority of their customers. But as people grow accustomed to these kinds of limitations (think software “licenses” rather than actually owning the software), you can expect more and more with often seemingly absurd, but mostly annoying and costly, results.

    2. MDT, if one can impose conditions on the use of a product post sale, then one can legally control anything and everything about downstream use through the patent laws.

      The Federal Circuit’s decision is an extremist decision, radical. Truly.

      If there was a poster child case why all these folks on the Federal Circuit need to be reassigned to other circuits so they can do no further harm to the patent system, this is it. The Federal Circuit itself needs to lose it exclusivity per the suggestion of the Seventh Circuit chief judge.

      1. if one can impose conditions on the use of a product post sale, then one can legally control anything and everything about downstream use through the ,b>contract laws.

        There – fixed it for you Ned.

        Of course, with contracts, the other side DOES have a say in agreeing to any particular contract or its terms.

        Just because a patent holder may want to have a contract that would provide excessive controls certainly does not mean that they will find any partner that would agree to that contract.

        They may end up merely being able to exclude their invention from all people, and have the invention first lapse the limited times protection prior to being adopted by the market.

        And this would be in FULL accord with the patent laws.

        (and no need to chase your Windmill against the CAFC)

          1. That’s rather the point Ned – the original owner could have drafted a better contract to place downstream owners into a privity of contract situation (again, think copyLeft).

            You really should visit the seed fact pattern that I laid out.

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