Implied license to use replacement cartridges?

By Armand Killan, Thijs van den Heuvel

06-2017

Today, the Court of Appeal of The Hague has published a judgment which could have far-reaching consequences for manufacturers of original appliances which use consumables that can be bought on the aftermarket, such as ink cartridges.

In a patent case between HP and Digital Revolution the Court of Appeal decided that the sale of replacement ink cartridges is allowed, even if the cartridges relate to an essential part of a patented invention. According to the Court, the user of a printer has an implied license to use the printer in a normal, well-functioning way, which includes the use of compatibles, provided that there is no protection for the cartridge itself. In practice the implications of this decision could be limited, since the Court of Appeal also indicated that the outcome can be different if the consumer has agreed to limiting conditions when purchasing the printer.

Background

In several European countries Digital Revolution offers ink cartridges that can be used as an alternative to cartridges of several well-known brands, including HP.

In the first instance proceedings, HP alleged that Digital Revolution directly infringed EP 2 170 617 ("EP 617") because all elements of claims 1 and 2 were present in the cartridges offered by Digital Revolution. This was rejected by the District Court of The Hague, because it found the claims to be invalid. In a later stage of the proceedings HP also argued indirect infringement of claim 7. This was also dismissed by the Court, because this additional claim was filed too late in the proceedings in violation of the principle of due process.

Decision Court of Appeal

In the appeal proceedings, HP again argued direct and indirect infringement. The appeal on the grounds of direct infringement was rejected by the Court of Appeal, because the Court found claims 2-6 and 13 of EP 617 to be invalid. The most interesting part of the judgment relates to the Court's decision on the alleged indirect infringement of claim 7[1].

Article 73 of the 1995 Dutch Patent Act ("DPA") defines indirect patent infringement as follows:

"The patentee may institute the claims at his disposal for enforcing his patent against any person who (…) supplies or delivers in or for his business, means relating to an essential part of

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