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Repair or Reconstruction - Are You An Infringer?

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© 2002, Gallagher & Dawsey Co., LPA
December 2002

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.

© 2006 Gallagher & Dawsey Co., L.P.A. - Cincinnati, Columbus, Dayton, Ohio

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