David vs. Goliath: used cartridges no longer belong to manufacturers

The US Supreme Court concluded the high-profile Impression Products vs. Lexmark International case, a landmark for the entire print market. With a collective decision of the judges, large vendors will not be able to put more pressure on the power of the patent right to small firms involved in refilling and restoring original cartridges.

→ The original court document , a wiki article with a detailed analysis of the case .

Lexmark is one of the largest US manufacturers of printing equipment (recently owned by the Chinese). And like most, the company works on a vendor lock-in scheme, trading relatively cheap printers and prohibitively expensive consumables.

For those who want to save, there is a return program (Lexmark Return Program) - the company on its own collects the waste cartridges, refills them and sends them back on sale. You can buy them at a discount (about 20% cheaper than new ones), but with the condition - to use only once, no independent refills. Nobody counts on the honest word of buyers, and the working resource of such ink tanks is limited to a special firmware of the chip blocking printing. In a normal situation (with new cartridges) the printer would be limited to a warning, but it would not stop the work.
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By the way, the company receives the used cartridges back under the recycling program (Lexmark Cartrige Collection Program), allowing customers to send them back and even without demanding money for it. Solely for the sake of the environment.

Impression Products is a small family-owned company from Charleston, WV, which has been involved in refilling cartridges for copiers for nearly forty years. The small scale of the company, which employs 25 people, can be judged at least by their simple site . Recently, the latter is replete with links to articles and news stories on confrontation with the printed giant.


Like many other small firms, Imression refilled any cartridges with toner, including the very ones that were returned from Lexmark, and then sold much cheaper than the originals. Protection of "disposable" chips was not difficult to get around. In fairness, the sale of non-original consumables has long been controversial from a legal point of view, but here the printing giant, as they say, found something to complain about and densely populated on several tankers, including Impression.

Lexmark had a great trump card up its sleeve - a US patent right that allowed manufacturers to freely dispose of inventions for the next 20 years. Once under heavy judicial pressure, Impression was on the verge of closure. However, the director, Eric Smith (who inherited the business from his father), managed to get into a lively lawyer from Mayer Brown. And those, in turn, not only dragged the case right up to the Supreme Court, but also won it.

Eric Smith with lawyer Mayer Brown share their story on national television

The panel of judges quite unexpectedly stood up to protect small businesses and decided that patent law extended to cartridges only prior to their “first sale”. From this point on, it is believed that the manufacturer received his legitimate remuneration for the invention, and the cartridge completely becomes the property of the buyer and he is free to dispose of it as he wants, including refueling and selling again. Moreover, businessmen working in the secondary market have the right to sell "reissued" cartridges not only in America, but throughout the world.

The importance of this business is not limited to a favorable outcome for Impression Products. In fact, by their decision, the judges finally legalized the international secondary print market, at least for American manufacturers.

The consequences of a loud trial did not take long to wait. The very next day, a large Chinese manufacturer of non-original consumables, ApexMic (recently changing its name to Ninestar, although everything is difficult there) applied to the United States International Trade Commission (USITC or simply ITC) to exclude their products from the list of prohibited for import (General Exclusion Orders). A month earlier, by decision of the commission, Apex blocked the possibility of supplying goods related to patents of Epson.

This turn of events looks ironic in the light of the fact that ApexMic enters with Lexmark into a single holding company, Zhubai Seine Technology.