FEATURE ARTICLE RECHARGEasia
Ronelle Ingram is a writer, speaker, author of Service with a Smile and is a regular columnist for copier and
imaging industry publications, like Recharge Asia. She began her technical career as a tool-case-carrying copier service tech. She is VP of Technical Support of Steven Enterprises in Irvine, California. Ms. Ingram is past
President of the Business Technology Association. A UCLA graduate, Ms. Ingram has taught thousands of office equipment professionals throughout the USA, Canada, Australia and Europe. Ms. Ingram’s greatest credential is her 40+ years of hands-on experience of managing very profitable service and telemarketing departments.
Patent Ponderings By Ronelle Ingram Have you ever wondered why only original, OEM products that were purchased in the United States are legally allowed to be remanufactured and re-sold in the USA? There are three landmark U.S. court decisions that directly affect the compatible manufacturing industry in the United States and throughout the world: • Hewlett Packard v. Repeat-O-Type - 1997 • Jazz Photo Corp. v. United States International Trade Commission - 2001 • Omega S.A. v. Costco Wholesale Corp 2008 - Supreme Court appeal - 2010 I am not a lawyer. I do not fully understand all the technical and legal nuances that are included in the full written text of the majority and dissenting decisions of these cases. However, I will briefly try to explain, in layman’s terms, a bit of background of these three legal rulings. Each directly influences how the compatibles industry must conduct their business in the United States today. These cases have direct repercussions for all those that manufacture, distribute, wholesale, resell and even use laser and inkjet cartridges. “Hewlett-Packard v. Repeat-O-Type Stencil Mfg. Corp., Inc.” established that refilling patented cartridges was considered a legally allowable repair and not “illegal reconstruction”, which would violate US patent laws. This judicial ruling was originally established by the United States Supreme Court Case of Aro Mfg. Co. vs. Convertible Top Replacement Co. in 1961. The court ruled the Convertible Tops Replacement Co. was able to replace the canvas even though the convertible tops were patented. The judgment dealt with the original purchaser’s right to repair a product that had been purchased and used; without infringing on the patent rights. The court majority decision stated: “The decisions of this 16
RECHARGEasia
OCTOBER 2011
Court requires the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to ‘in fact make a new article,’ after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity. …Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. Measured by this test, the replacement of the fabric involved in this case must be characterized as permissible ‘repair,’ not ‘reconstruction.’” This same legal principle was extended to include that the right of anyone who purchased a laser or inkjet unit, has the right to repair it. In this case, the repair involved adding new toner or ink or other individual parts to the empty cartridge. “Jazz Photo Corp. v. United States International Trade Commission” is a 2001 case in which the United States Court of Appeals for the Federal Circuit clarified the law of repair and reconstruction. The original purchaser/owner of a patented item has the right to fix the item when it breaks, but does not have the right to essentially build a new item from the parts of an old one. Polytech Enterprise Limited acquired used disposable cameras which were manufactured by Fuji Photo Film Co., Ltd. and sold by Fuji to consumers. Fuji owned several patents on the technology used in the cameras. Polytech refurbished the cameras through a process which included fitting the camera with new film and, in some instances, with new flash batteries, repairing the camera case to exclude light following the film reloading operation, repackaging, and relabeling under the trademark of Jazz Photo Corp. The cameras were brought to China to be refurbished, and Jazz Photo then re-imported them into the United States for
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