Japanese Grand Panel holds refilled ink cartridges infringed Canon’s patent
(Canon Inc. v Recycle Assist Co., Ltd (31 January 2006) IP High Court, Grand Panel)
Copyright Thursday, April 20, 2006 Duncan Bucknell Company
On 31 January 2006, a Grand Panel of the Japanese Intellectual Property High Court held that by recycling (refilling and reselling) Canon’s inkjet cartridges, Recycle had infringed Canon’s patent number JP 3278410. Click here for a summary of the case in English.
Take home
The doctrine of exhaustion of patent rights under Japanese law is by no means simple. In essence:
1. Once a patented product is sold in Japan by the patentee, it is no longer an infringement to use, assign or lease the product.
2. If the patentee sells a patented product outside Japan the patentee may not enforce patent rights in Japan unless there is an agreement with the direct assignee not to exploit the product in Japan.
3. Notwithstanding 1 or 2 (above), it is an infringement to:
a. reuse or recycle a patented product after its ordinary life (type 1 infringement);
b. modify or replace the whole or part of the components that constitute an essential part of the patented product (type 2 infringement).
(In this case, type 2 infringement was found since in recycling the cartridges to their former function, Recycle restored two features of the cartridges which were held to be an essential part of the product.)
Facts
Recycle Assist has bought used inkjet cartridges, recycled and refilled them and imported them into Japan. Recycle conceded that the cartridges in question fell within the scope of the claims of the JP ‘410 patent. Recycle argued that Canon’s rights in the patent had been exhausted on first sale of the cartridges and cited the Japanese Supreme Court in the BBS Case (Judgment of the Third Petty Bench of the Supreme Court of 1 July 1997, Minshu Vol. 51, No. 6, 2299).
Canon had brought an action for patent infringement and lost at first instance, appealing to the Grand Panel of the Intellectual Property High Court. The Court reversed the first instance judgment and granted an injunction.
Comment
The doctrine of exhaustion of rights in relation to patent infringement is complicated and varies in sometimes subtle ways from jurisdiction to jurisdiction. Please do let me know if you would be interested in a brief comparative article.
2006 has been a successful year so far for Canon in enforcing patent rights relating to ink cartridge technology.In March it was confirmed that Canon had won an appeal to the Higher District Court of Düsseldorfwhich dismissed an appeal by Pelikan Hardcopy Deutschland GMBH and held that Pelikan infringed Canon’s European Patent number EP 0 879 703 in Germany (see Canon’s press release).
