By Ashley Russo

There is no question that technology has greatly increased in the last century.  With the invention of automobiles, telephones, computers, and cell phones, has come so many opportunities for tech companies to develop and patent new, innovative technologies.  However, with this rapid development in technology has also come several cases, especially Supreme Court cases, that allow for patent laws to develop along the way.

For example, the Supreme Court is set to answer the questions set out in the case Lexmark International, Inc. v. Impression Products.[1]  Recently, attorneys argued this case, which deals with printer ink cartridges.  What is so implicative about this case is that it has potential implications for other emerging technologies.  With emerging technologies typically results in a fight for ownership over the rights to patent that technology.  Historically, this has been an issue in the patent law industry for over a century, beginning with the movie projector patent.  What is interesting about the attorneys that argued for the patent ownership rights in Lexmark International, Inc. v. Impression Products is that they used the same ownership arguments that the attorneys who argued for the movie projector ownership rights used over a century ago.

In the early 20th century, motion pictures were on the rise.  With the invention of motion pictures came about hundreds of other technological innovations to propel the industry into what it is today.  With this, different people invented all of these different components of what goes into the making of a movie, such as cameras, lighting, and projectors.  At this time, Thomas Edison, who held the patent to the motion picture camera created the corporation called the Motion Picture Patents Co., which held all of the patents for the major motion picture industry.  Here, the Motion Picture Patents Co. controlled everything about this budding industry.  For example, undeveloped film could only be sold to licensed filmmakers, who could only lease (not sell) the produced film reels to licensed distributors, who could only distribute to licensed movie theaters.

Here, in Motion Picture Patents Co. v. Universal Film Manufacturing Co.,[2] the Supreme Court decided that the Motion Picture Patent Co.’s overreaching attempt to control the use of products after they were sold prohibited them from doing so.  In 1915, a theater company that owned a film projector, complete with its license notice place, obtained two film reels from Universal Film Manufacturing Co.  The Court determined that the two reels were legally manufactured because the patents on the film had expired.  However, they also determined that Universal Film Manufacturing Co. was not a licensee of the Motion Picture Patents Co.  Once the theater company premiered the unauthorized reels, the Motion Picture Patents Co. sued.  But, the Motion Picture Patents Co. faced the issue that the theater company actually owned the projector, and the Supreme Court ruled that owners of devices did not get to use the things that they own, and they disliked the fact that the Motion Picture Patents Co. could use patent law to control the use of a device (such as the movie projector) after a sale.

Now, a century later, Lexmark International is using a similar tactics to those that were used by the Motion Picture Patents Co. a century earlier.  Today, Lexmark International’s ink cartridges cannot be used or refilled without approved ink.  This gave rise to the Supreme Court case.  Today, Lexmark International sells its ink cartridges with a license sticker, which prohibits buyers from refilling or reselling the cartridge to anyone other than Lexmark themselves.  With this, Lexmark International’s attorneys argue that the patents which are on the cartridge make the license sticker enforceable.  Therefore, they have the authority to prohibit other companies (in this case, Impression Products) from refilling Lexmark International’s ink cartridges without authorization. This all seems very familiar, and it acts as an opportunity for the Supreme Court to allow companies to have utter control over products, which could lead to a monopolization of products that the Court has sought to do away with for quite some time.

The Supreme Court is expected to decide the Lexmark International, Inc. v. Impression Products case within the next few months.  Thus, if they look back to the way in which they treated Motion Picture Patent Co.’s motion picture patent a century ago, it is likely that they will reject Lexmark International’s theory that they, and only they, may refill their ink cartridges.

Student Bio: Ashley is a current 2L at Suffolk University Law School. She is a Staff Member on the Journal of High Technology Law, President of the Environmental Law Society, and Vice President of the Suffolk Public Interest Law Group. She holds a B.A. in History and Political Science from Hobart and William Smith Colleges.

[1] See Lexmark Int’l., Inc. v. Impression Prods., 816 F.3d 721 (U.S. Ct. App. 2016).

[2] See Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917).


Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.

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