Right to Repair: Infringement or Exhaustion Part 2January 8, 2021

This post is part 2 of a series of posts relating to a person’s right to repair your purchased products. Part 1 discussed the general background and several policy arguments surrounding both sides of this issue. This post will discuss the main patent laws and legal doctrine related to the right to repair.

The central laws and doctrines relating repair of a patented product are patent infringement and exhaustion. Repairing a patented product and how it relates to infringement has been addressed by the courts starting in Wilson v. Simpson, 50 U.S. 109 (1850), and later clarified in Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961); Lummus Indus., Inc. v. D.M.E. Corp., 862 F.2d 267 (Fed. Cir. 1988); and Sandvik Aktiebolag v. E.J. Co., 121 F.3d 669 (Fed. Cir. 1997). These cases distinguished between replacing a worn-out or broken component with substantially reconstructing a product. The distinction between the two, repair vs. reconstruction, hinges mainly on the anticipated life span of the product and if the replacement parts were patented. Hence, a repair is if a part was only being replaced with a non-patented part to allow the product to live out its anticipated natural life span and qualifies as an exemption to infringement.

Reconstruction, however, is when either a substantial part of the product is being replaced or if the part being replace is itself patented and when the replacement extends the life of the product beyond its anticipated natural life expectancy. Reconstruction is viewed as essentially making a second product by extending its life beyond its normal use and is therefore infringing the patented product.

This may seemingly contradict the doctrine of patent exhaustion, or first sale doctrine. Under patent exhaustion, after an authorized sale, the patentee may no longer control the use or disposition of the product. See Impression Products, Inc. v. Lexmark International, Inc., 137 S. Ct. 1523 (2017). However, in Auto. Body Parts Ass’n v. Ford Globe. Techs., LLC, 930 F.3d 1314 (Fed. Cir. 2019), the court held that the exhaustion only applied to the original product being sold and does not extend to its reconstruction if the part being reconstruction was patent protected. This patent protection could be either a utility or design patented part.

While Auto Body Parts may seem to contradict Impressions, the Supreme Court denied certiorari for Auto. Body Parts. This does leave an avenue open for manufacturers to limit a person’s right to repair though the use of a combination of multiple patents. For example, a manufacture may use a design patent to protect a specific driver tips and/or screw heads to keep their product repair-proof or by protecting individual parts. Under Auto. Body Parts, a 3rd party would be an infringer for making the driver needed to remove the screw or making an aftermarket part due to the protection granted by the design patent.

Therefore, while the Courts have recognized there is a right to repair under patent law, this right does have some limitations and a manufacturer may use a combination of design and utility patents to further limit the right to repair.

Part 3 will cover the issues involving copyright, contracts, and their interactions.

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