Repair of Disposable Cameras Is Not Infringement
August 21, 2001
Last Month at the Federal Circuit - September 2001
Judges: Newman (author), Michel, and Gajarsa
In Jazz Photo Corp. v. International Trade Commission, No. 99-1431 (Fed. Cir. Aug. 21, 2001), the Federal Circuit reversed the ITC’s exclusion order concerning certain disposable cameras, finding that the refurbishment of those cameras was not prohibited reconstruction. The Court affirmed the ITC’s exclusion order with regard to certain other disposable cameras.
Fuji Photo Film Company (“Fuji”) charged twenty-seven Respondents with infringement of fifteen patents at the ITC. The patents all relate to disposable cameras.
On appeal, it was not disputed that the accused refurbished cameras contain all of the elements of all or most of the claims. The Respondents argued, however, that they do not build new disposable cameras, but simply replace the film in used cameras. They argued that the cameras have a useful life longer than the single use proposed by Fuji, that the patent right has been exhausted as to these articles through their initial sale, and that the patentee cannot restrict their right to refit the cameras with new film and to reset the mechanism.
The Federal Circuit reviewed the precedent concerning the repair versus reconstruction distinction, noting that while the ownership of a patented article does not include the right to make a substantially new article, it does include the right to preserve the useful life of an original article. The Court also noted that the patentee’s unilateral intent for the product, without more, does not bar reuse of the patented article or convert a permissible repair into an impermissible reconstruction. The Court observed that the replacement of unpatented parts having a shorter life than is available from the combination as a whole is characteristic of repair, not reconstruction. Thus, the ruling of impermissible reconstruction in this case was incorrect.
The Court also rejected Fuji’s restricted license argument based on instructions and warnings printed on the covers of the disposable cameras, finding that these instructions were not in the form of a contractual agreement.