The court charged with patent law appeals, the Court of Appeals for
the Federal Circuit (CAFC) has shown a interesting application of an
old patent doctrine, the so-called "repair or reconstruction"
doctrine. If you buy a patented product and it wears out or breaks,
can you repair it without becoming an infringer? Does someone who
sells repair parts for a patented device, become a contributory
infringer? (see related article in this issue)
The doctrine is easy to state in theory, but can be difficult to apply
in practice. Repair of a worn or broken item is allowed, but the
replacement of an unworn or unbroken component of a patented
combination is impermissible "reconstruction," unless such an unworn
component is merely replaced incidental to the replacement of a worn
component when it is impractical to replace only the worn components.
In other words, reconstruction is considered the equivalent of the
making of a new product.
The issue came to the court in the context of today's very popular
disposable cameras. 27 respondents were charged with infringing Fuji's
U. S. Patent No. 4,884,087 for a disposable camera, or in the language
of the patent, a "lens fitted film package," or LFFP. The LFFP is
initially fitted with a cartridge of film at the factory. The alleged
infringers bought used cameras from photo processors that had the film
removed and developed, and then reloaded them with new film. There was
no question as to the fact that the cameras had a useful life
significantly greater than a single use. Is it repair or
reconstruction?
The CAFC, overturning the lower court's finding, held that such
activities constituted permissible repair. The court found that the
basis for a repair/reconstruction dichotomy is the principle of
exhaustion of the patent right. The unrestricted sale of a patented
article, by or with the authority of the patentee, "exhausts" the
patentee's right to control further sale and use of that article by
enforcing the patent under which it was first sold. The replacement of
unpatented parts (the film), having a shorter life than is available
from the combination as a whole, is characteristic of repair, not
reconstruction. The lower court's ruling of reconstruction was
incorrect, because the remanufacturing processes simply reused the
original components (the camera), such that there is no issue of
replacing parts that were separately patented.
However, because the court based its finding on the first use
doctrine, the court did allow Fuji to ban the re-importation of
cameras that had not been first sold in the U.S., a potential problem
for the respondents, as a large number of the remanufactured cameras
sold in the U.S. arise from foreign sources.
What lesson for an inventor? Focus on the exact nature of parts
replaced in any remanufacturing process to evaluate the question of
repair or replacement.
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