IP Law Bulletin

According to a recent Supreme Court decision, when it comes to the applicability of patent exhaustion, “restrictions and location are irrelevant; what matters is the patentee’s decision to make a sale.” In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court confirmed that the authorized sale of a patented article by a patentee exhausts all patent rights in that article, even where the patentee and the buyer agree to post-sale restrictions on the use and resale of the article. The Court also held that the authorized sale of a patented product abroad triggers patent exhaustion, just as a sale in the U.S. does.

Patent owners recently received a favorable decision regarding exhaustion of patent rights from the en banc Federal Circuit.  The case, Lexmark International, Inc., v. Impression Products, Inc., concerns aftermarket print cartridge sales and the issue of whether Lexmark’s patent rights are exhausted by (1) sales within the U.S., despite the inclusion of a single-use/no-resale restriction, and (2) sales outside the U.S.  The Federal Circuit considered the case en banc to determine whether Supreme Court rulings in Quanta Computer, Inc., v. LG Electronics, Inc., and Kirtsaeng v. John Wiley & Sons, Inc. (see prior Nutter commentary here and here), had any effect on the previously-controlling Federal Circuit precedent.  Ultimately, the Federal Circuit distinguished the Supreme Court rulings and found for Lexmark based on the previously-controlling precedent.