Canon wins patent lawsuit: Supreme Court ruled that recycled ink cartridges infringe patent right Tokyo Japan

In a patent infringement lawsuit between Canon Inc. and Recycle Assist Co., over recycled products manufactured from expended printer ink cartridges, the Supreme Court (Presiding Judge Kazuko Yokoo), on November 8, 2007, affirmed the claims made by Canon Inc. (plaintiff in the first and second trial), and dismissed an appeal filed by Recycle Assist Co.,. Thus, the intellectual property high court decision barring Recycle Assist Co., from selling the recycled ink cartridges and ordering it to discard its remaining stock has become final.

This case involved Canon filing a patent infringement lawsuit against Recycle Assist Co., that was importing and selling recycled products made in China that were manufactured by opening holes in expended Canon ink cartridges, cleaning the ink cartridges, and then refilling them with new ink. In principle, when a patented product is sold, its patent right is regarded as having achieved its purpose and therefore expires. However the Supreme Court, with due consideration for this principle, ruled that “In a case where a product is processed or has its component replaced to be manufactured into a new patented product”, patent rights may be exercised against the new patented product.

In determining whether a recycled product may be regarded as a new patented product, this court decision held that such determination should be made by comprehensively considering various factors including characteristics of the recycled product such as structure and durability, details of the patented invention, the processes performed on the original product, the nature and function of the component being replaced, and actual transaction conditions of the patented product, for example.

As for the recycled product at issue in the present case, the court decision held that manufacturing the recycled product by performing “processes” of opening holes in expended ink cartridges that are intended for one time use, discarding the ink remaining in the expended ink cartridges, and refilling them with new ink, and recreating the substantial feature of the patented invention directed to preventing ink leakage should be recognized as “a new production of the patented product”.

With the growing public interest toward recycled products in view of present environmental protection issues, this court decision is drawing much attention as the Supreme Court’s first ruling on patent infringement regarding a recycled product of a genuine product.