Seiko), manufactured and sold printer cartridges under the brand name ‘Epson’ (
Epson cartridges). The patented Epson cartridges were a single-use product, meaning that once the ink in the cartridge was depleted, it was necessary to dispose of, and replace, the entire cartridge.
Ninestar Image (Malaysia) SDN BHD obtained empty Epson cartridges and modified them to enable the cartridges to be refilled. The Appellant, Calidad Pty Ltd (
Calidad) then purchased the modified cartridges and imported those cartridges into Australia for public sale.
Calidad relied on the ‘implied licence’ doctrine to argue that they had not in fact breached Calidad’s patent, as an implied licence to use, maintain, import, export, resell or otherwise dispose of the Epson cartridges was applied to the product upon its first sale.