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Law Professor
Law Professor, Law Professor
Category: Intellectual Property Law
Satisfied Customers: 1105
Experience:  Professor of Law at Top-Tier Law School, specializing in patent & copyright
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Please take a look at my website http // I

Customer Question

Please take a look at my website:

I manufacture a reset & refill kit that allows people to reset and refill cleaning cartridges for an automatic cat box called Cat Genie. The cartridges use a simple eeprom chip that counts down from 60 to 0 washings and then the cartridge no longer works, causing the consumer to replace the cartridge. my product allows the user to reset the chip and refill their own cartridges thus saving cost and waste to the environment.

yesterday I receivd a cease and desist letter from Petnovations who make Cat Genie claiming that I was voilating their "patentable" product. See the letter here:

I am confident that I would be covered under case law Lexmark vs Static Control where it was ruled that people can refill ink cartridges and bypass/reset codes on those cartridges. See that case here:

What are your thoughts?
Submitted: 8 years ago.
Category: Intellectual Property Law
Expert:  Law Professor replied 8 years ago.
Great questions and you are right to be thinking about Static Control and the related caselaw. It's hard to know exactly what would happen if this one were to get litigated -- both because this is a relatively new area of the law (figuring out when a DMCA copyright case is so removed from the purposes of the copyright system that a possible technical violation of the DMCA ought to nonetheless be ignored) and because some of the analysis would turn on exactly what the software says and does, let alone what (if anything) the relevant patents might cover. Note that they also hand-waive in this letter about other possible legal theories, though some of them (like the trade secret point) sound ridiculous on these facts.

The question for you, though, isn't just whether you are right, but whether you want to deal with the cost, uncertainty, and frustration of litigation related to these issues. The law firm that wrote you is a big, serious firm -- which means that the plaintiff here has already spent some real money to write you, and likely is willing to spend some real money to fight with you. Your intuition -- that they are in essence playing the same game that Lexmark tried to play with its print cartridges, or those garage door companies tried to play with their garage door openers -- sounds right to me, but it still could be a long, uncertain, annoying road between here and there.

All that said, your response is a great one. If the EFF were to get interested and write a letter back on your behalf, that might even the playing field a bit. No one in this situation wants the EFF to get interested; the EFF's track record here is too good. (Indeed, I'm going to send this information to one of my contacts at the EFF and see if that might help.) Another option for you would be to hire local counsel and fire back your own formal letter. I just hate to see you in the position of having to spend money to do that.

In short, then, on this quick summary of the facts, I think you are moving in the right direction -- the main issue here looks a lot like the cases you know about -- but now the question is whether this is a fight you want to, and can afford to, fight.

I hope the EFF steps up. This is spot-on for them.
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Customer: replied 8 years ago.

thanks for your comments. I agree it might be a costly and time consuming process and I for one don't want to do that.


As for patents, I've checked with the patent office and they only have one patent on the main unit itself, but it doesn't cover the cartridge or the chip at all. And they have no patents pending in the US patent system.


Thank you very much for forwarding the information to your contact at EFF, I really appreciate that! Might I ask the name of your contact so I can followup with him or her?




Expert:  Law Professor replied 8 years ago.
<p>I can't do that - but I have sent a note to one of the top EFF people, along with the link to your letter. No promises, but worth a try. (If your full contact information isn't on that letter, maybe add it to that webpage? EFF is more likely to want to reach out to you by email than letter.)</p><p> </p><p>Good luck to you. I hope you get the help you need.</p>
Customer: replied 8 years ago.
Great, thank you!
Expert:  Law Professor replied 8 years ago.
Just got a note back from EFF, and they read the letter and are looking at this to see if they can help. Here's hoping!

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