Is It Patent Infringement To Reuse Recycled Apple Magsafe Connectors?

from the patent-exhaustion dept

Thu, Sep 23rd 2010 1:15pm — Mike Masnick

AppleInsider has the details of yet another patent infringement lawsuit filed by Apple, who has become a lot more aggressive on the patent front lately. This lawsuit is against Sanho, a company that makes a variety of external batteries for Apple products. There are six patents listed in the lawsuit, but two are design patents, which are pretty narrow. The four (really three) utility patents are

7,517,222: Magnetic connector for electronic device
7,627,343 & 7,751,853 (really the same patent, as one is a continuation of the other: Female receptacle data pin connector
7,783,070: Cable adapter for a media player system

All of them, obviously, have to do with the connectors Apple uses to charge its various products, including the famed "MagSafe" charger found on Apple laptops that connect via a magnet, which break away easily (such as if someone trips over the cord). I do remember when this first came out, that Apple indicated it had patented up the technology and would block others from using it.

However, where this gets interesting is that, according to Sanho's website, it doesn't make its own magnetic connectors, but simply recycles official Apple connectors:

"Our charging cables use original Apple MagSafe connectors for maximum compatibility,"

If that's the case, it seems to raise some questions about patent exhaustion, where a company can't license a patent for one player in a supply chain, but then claim that later buyers, who are buying from the original licensee need to re-license the patent. Think of it as being similar to the principle of "first sale" in copyright. I would think that, on those connectors at the very least, Sanho could make a case for patent exhaustion if it really is just buying up official Apple MagSafe connectors and repurposing them.

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Filed Under: first sale, magsafe, patent exhaustion, patents
Companies: apple, sanho

33 Comments

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Seamus (profile), 23 Sep 2010 @ 1:42pm

Okay, here's the problem. The very language that you used, implied that there's an issue. "Licensee." That means they're not an owner, so no sale occurred. Also, there's a case about patent exhaustion that you'll hate, but it is Mallinckrodt v. Medipart 976 F.2d 700 (http://en.wikipedia.org/wiki/Mallinckrodt,_Inc._v._Medipart,_Inc.) and it speaks a little to what's happening here.

Also, the idea of getting around a patent through recycling of a particular component and reusing it in one's own product would frustrate the patent holders ability to exclude others from utilizing the technology without licensing it. I can almost guarantee Apple will win this suit.
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- Anonymous Coward, 23 Sep 2010 @ 1:56pm
  
  Re:
  Who's getting around the patent? If the patented product was originally manufactured under license from the patent holder and the patented product is then recycled and incorporated into a product that's not itself subject to the patent in question, I can see no reasonable case for the need to relicense that patent.
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  - Gary Bauer (profile), 23 Sep 2010 @ 2:06pm
    
    Magnetic connectors?
    So, I have a deep fat fryer from Waring (makes great french fries btw) that has a power cord with a magnetic connector that works well in keeping me safe when I trip over the cord. I wonder if who has the original patent? Someone is going to be dunked in hot oil!
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- cc (profile), 23 Sep 2010 @ 2:09pm
  
  Re:
  You did read the *whole* article you linked to, right?
  
  "The effect of Mallinckrodt may have been restricted by the Supreme Court's 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc., which broadly reaffirmed the exhaustion doctrine without mentioning Mallinckrodt. It is too early to state, however, what the impact of Quanta on the Mallinckrodt doctrine will be."
  
  This could end up being one of those legal battles that take years to resolve. Of course, we are talking about Apple here...
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- Keith (profile), 23 Sep 2010 @ 2:16pm
  
  Re:
  I'm not so sure that you can "guarantee" that.
  
  From the wikipedia page:
  
  "Until the Federal Circuit’s Mallinckrodt decision, an unbroken line of Supreme Court and lower court precedents held that the patentee’s patent right over a product that the patentee sold (or that a licensee authorised to make a sale sold) ended at the point of sale."
  
  ...
  
  "The Federal Circuit’s Mallinckrodt doctrine has not avoided criticism as allegedly stating legal rules that contradict Supreme Court decisions. Thus in 2007, the United States Solicitor General filed an amicus curiae brief in Quanta Computer, Inc. v. LG Electronics, Inc.,[8], stating, as to the first prong, "The test adopted by the Federal Circuit in Mallinckrodt thus reflects a fundamental misunderstanding of the role and scope of the patent-exhaustion doctrine. ... The court of appeals’ approach cannot be reconciled with those [Supreme Court] precedents,"[9] and more generally that the Federal Circuit’s Quanta opinion based on Mallinckrodt “rests on the same erroneous understanding of patent exhaustion that infuses the Federal Circuit’s approach to this area of the law."
  
  Long story short, that single ruling in Mallinckrodt v. Medipart is in direct conflict with an unbroken line of prior precedents set as high as the Supreme Court.
  
  I say defendant has a case.
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- Jason, 23 Sep 2010 @ 2:59pm
  
  No such thing...
  No such thing. The buyer of re-sold goods isn't getting around anything. The maker has already recovered for that item via the revenue on the original sale.
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Anonymous Coward, 23 Sep 2010 @ 1:48pm

Shove off if youre telling me i can't mod my power cable that I paid for to work differently and recombine parts to suit my needs. Shove off if youre telling me I can't pay someone else to do that to save me hours of my life.

Thanks for the legal analysis; it is interesting and all but the law is FAIL if it prohibits me from doing this and it deserves nothing but contempt from us.
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iamtheky (profile), 23 Sep 2010 @ 2:19pm

think maybe they bought up all the faulty magsafe kits from the recall a couple of years ago?

and everything in the patent discusses a "plurality of magnets"

so make a safe magnetic connector with one custom shaped magnet? maybe one that looks exactly the same from the top down but has a base the pins are arising (and forged) from, making it one solid piece, or is that too novel?
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william (profile), 23 Sep 2010 @ 2:36pm

well, consider the recent stupid EULA ruling, see http://www.techdirt.com/articles/20100912/12212110968.shtml, I hope the court doesn't destroy this one too.

Why can't Apple just tell it's licensee not to sell to Sanho or else they'll retract their license.

However, I really find it hard to believe that Sanho can find a source for enough "recycled" connector to make enough product for the masses.
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Anonymous Coward, 23 Sep 2010 @ 2:55pm

Scribd has a copy of the complaint filed by Apple, a reading of which shows that the claims being asserted against Sanho are based at least upon contributory infringement under Title 35, Section 271(b).

Apple alleges that Sanho manufactures products in its own right that are not "staple items of commerce suitable for a substantial non-infringing use", and that when combined with other articles infringe Apple's patents.

As I read the complaint, this is not a "first sale" issue (aka - Patent Exhaustion).
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Overcast (profile), 23 Sep 2010 @ 3:53pm

where a company can't license a patent for one player in a supply chain, but then claim that later buyers, who are buying from the original licensee need to re-license the patent.

Let's say for the sake of debate...

What if:

*The companies who make boxes for apple, having patents on the container board makeup, patents on the logos or images, or whatever - says the same about apple using it's boxes.

*Various tools, devices and other things used in images on Apples marketing pages want in on this too. For instance, search their domain for images. I'm sure you'll find some including medical devices, buildings, cars, tables, etc - that all of the respective manufacturers of have patents on too.

*The plastics, metals, and other materials made that they use in the making of their computers; I'm sure all that is patented too - perhaps they want a cut.

*The companies that make paper that is in turn used to print manuals, brochures, etc - perhaps since their paper likely contains light water marks or whatever - they might want a cut too.

This list could basically go on to infinity; I could sit for hours and come up with hypothetical concepts - to where every company gets a cut of every other company's profits.

Eventually it could cripple some parts of industry in general. Forcing smaller companies out of business.

Or perhaps - maybe that's the intent of this 'trend'?
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Pat, 23 Sep 2010 @ 3:59pm

This is an interesting one...
Patent exhaustion has a strong point here, but I think Apple can overcome this with a "repair" argument. Most lay people don't realize that you can't always do whatever you want just because you buy something. You can't infringe a patent just because you bought an embodying product.

Wanting people to innovate as much as possible is the whole reason there are patents, so if an infringer is using Apple's patent without a licensee, and that patent is valid, then Apple should get paid. No free riders allowed.

Also, these things are made primarily to be used with Apple's patented products. We shouldn't stop Apple from blocking this market I cause maybe they want to charge double for a portable charger I use that $ to pay more engineers and grow their company.

Is it counter intuitive? Yes. But they should've sought to get a license from Apple. If Apple doesn't want to give them one, to bad, that's their constitutional right.

PC-USER.
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- Avatar28 (profile), 23 Sep 2010 @ 5:26pm
  
  Re: This is an interesting one...
  By that argument, if I run a store that sells, say, used computers then I should have to buy a license from Dell, Apple, HP, Gateway, etc in order to sell their products. That about sum it up?
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  - Anonymous Coward, 23 Sep 2010 @ 11:36pm
    
    Re: Re: This is an interesting one...
    No, because there is no substanial noninfringing use for these chargers. Plus you can repair those old computers cause dell doesnt have patents on all the parts. But here, apple does.
    
    Although you are probably infringing 1000 patents as you read this, those patentees are choosing not to sue you. Here, apple is, and that's why they should get compensated for somebody making money off their intellectual property.
    
    These guys should have at least gotten a legal opinion before doing this cause now they risk punatives for intentional infringent.
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    - Anonymous Coward, 24 Sep 2010 @ 5:50am
      
      Re: Re: Re: This is an interesting one...
      You don't find it problematic to admit that at any given time anyone could have thousands of suits brought against them, but we're preserved by the grace and magnanimity of The Corporations?
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- Richard (profile), 24 Sep 2010 @ 2:59am
  
  Re: This is an interesting one...
  Also, these things are made primarily to be used with Apple's patented products. We shouldn't stop Apple from blocking this market I cause maybe they want to charge double for a portable charger I use that $ to pay more engineers and grow their company.
  Because the items in question have already been purchased legitimately from Apple.
  
  Apple have had their legitimate cut.
  
  If you "repair argument" is valid then the law is a travesty and should immediately be changed.
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- Richard (profile), 25 Sep 2010 @ 3:33pm
  
  Re: This is an interesting one...
  Wanting people to innovate as much as possible is the whole reason there are patents,
  No. Patents exist because the granting of a monopoly by the government guarantees the allegiance of the patent holder to said government.
  
  This stuff about encouraging innovation is an excuse, invented to justify the retention of a medieval practice in the modern world. There is a whole raft of evidence - much reported on this site showing that patents in fact discourage innovation. What they actually encourage is rent seeking.
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AnonCow, 23 Sep 2010 @ 4:26pm

That has all the goodwill of suing a playground because they built a swing out of your company's automobile tires...

New company slogan:

"Doing Our Part To Support The Landfill Industry"
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- Richard (profile), 24 Sep 2010 @ 5:38am
  
  Re:
  Doing Our Part To Support The Landfill Industry,
  
  Surely, under this doctrine, the landfill industry also requires a licence to dump a patented item.
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BentFranklin, 24 Sep 2010 @ 12:40am

I understand why software is licensed instead of sold. But when did licensing replace sale for physical objects?
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- Richard (profile), 24 Sep 2010 @ 5:46am
  
  Re:
  I understand why software is licensed instead of sold
  
  Yes - it's a sad story - originally s/w was licensed in order to give you more rights than copyright allowed - because strict copyright would have prevented you from even running a program - let alone making a backup. However when the law was clarified to allow these things without a special agreement, the licence agreements started being abused to restrict user rights.
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Anonymous Coward, 24 Sep 2010 @ 5:44am

I believe 12 above may have confused the legal concepts of "repair" and "reconstruction", the latter relating not to repair but to manufacture.
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- Cynyr (profile), 24 Sep 2010 @ 7:50am
  
  Re:
  As was pointed out they are buying the connectors from licensed products. So when those were made Apple got it's cut. From my understanding Sanho is not making the connector but simply buying them.
  
  http://www.sparkfun.com/commerce/product_info.php?products_id=8295
  
  Can i buy 200k of those from sparkfun and make my own product?
  If i buy them from an authorized source(original apple busted PSUs are authorized) then Apple has been paid what it wanted for it's patent when it was sold the first time.
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Hephaestus (profile), 24 Sep 2010 @ 7:50am

Funny thing ...
I had a web page 20 years back where I described magnetic connectors. It came from walking by a computer and tripping over the keyboard cable and breaking the motherboard. I see the patent as very obvious.
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- trench0r (profile), 24 Sep 2010 @ 9:42am
  
  Re: Funny thing ...
  this is apple, they police raid peoples houses at their behest, the patent office uses them specifically to point out how successful patents are to "the economy" I'm sure his highness king jobs could patent dirt and ice and sue penguins and sue the north pole for infringing
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  - trench0r (profile), 24 Sep 2010 @ 9:44am
    
    Re: Re: Funny thing ...
    doh, no edit button and quick clicky finger..
    
    they = the
    
    scratch "and sue penguins" I realized that was dumb and meant to say glaciers or the north pole so there..
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Anonymous Coward, 24 Sep 2010 @ 9:42am

No patent exists here...
Apple should never have been granted this patent in the first place. As mentioned in a previous comment, magnetic power cords have been in use for years in kitchen appliances. Just because it's on an electronic device, doesn't mean it deserves a separate patent.
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- Anonymous Coward, 24 Sep 2010 @ 10:02am
  
  Re: No patent exists here...
  Sound like you really know your stuff. Were you Sanho's attorney?
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- Mike42 (profile), 27 Sep 2010 @ 7:36am
  
  Re: No patent exists here...
  I'm late in realizing this, but there was a toy in 1977 called the Micronaught Battlecruiser which employed a magnetic break-away cord, so that children could not pull out the cord and break it. And it looks like you can buy one for about $20 today.
  Just another entry in the prior art category.
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Pat, 24 Sep 2010 @ 9:56am

People... this is a second creation of the patented entity
19 I apologize... I phrased it as Apple's counter to a repair argument. They should win on a reconstruction argument.

People unfamiliar with patent law:

http://ipwatchdog.com/advanced-patent/repair-vs-reconstruction/

"Underlying the 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. In United States v. Masonite Corp., 316 U.S. 265, 278 (1942), the Court explained that exhaustion of the patent right depends on “whether or not there has been such a disposition of the article that it may fairly be said that the patentee has received his reward for the use of the article.” See, e.g., Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568, 27 USPQ2d 1136, 1138 (Fed. Cir. 1993) (“The law is well settled that an authorized sale of a patented product places that product beyond the reach of the patent.”) Thus when a patented device has been lawfully sold in the United States, subsequent purchasers inherit the same immunity under the doctrine of patent exhaustion.

However, the prohibition that the product may not be the vehicle for a “second creation of the patented entity” continues to apply, for such re-creation exceeds the rights that accompanied the initial sale."
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- Anonymous Coward, 24 Sep 2010 @ 10:01am
  
  Re: People... this is a second creation of the patented entity
  Also, its really great to start protesting corporations but you wouldn't have a cool computer to type on or if you did you would need to be uber-rich.
  
  Patents let groups gather their money, pour it into something risky, and recover the benefit of that risk.
  
  People love the fruits of that risk (i.e. technology), but then cry when the inventor wants to enforce their constitutional right.
  
  Our founding fathers weren't stupid people, and understood that for every person whining and crying there would be 100 people happy just to have new and affordable products to begin with.
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- Richard (profile), 25 Sep 2010 @ 9:26am
  
  Re: People... this is a second creation of the patented entity
  I note that you quote Gene Quinn in your argument - Gene Quinn is a well know Uber-Patent maximalist who has lost every argument he has had here. I suggest you quote a more neutral source.
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  - Anonymous Coward, 25 Sep 2010 @ 12:35pm
    
    Re: Re: People... this is a second creation of the patented entity
    The reliance on comments by Mr. Quinn is irrelevant. What is relevant is that there is a longstanding doctrine in the law pertaining to repair vs. reconstruction. If the former, no problem. If the latter, a potential claim for infringement.
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