Supreme Court Decision Limits Post-Sale Restrictions by Patent Owners

The United States Supreme Court today held in Impression Products, Inc. v. Lexmark International, Inc. that the doctrine of patent exhaustion limits post-sale restrictions by patent owners and that patent rights are exhausted once a product is sold domestically or internationally. Partially continuing the recent theme of unanimous intellectual property decisions (see here and here), the Supreme Court held 8-0 that domestic sales — even restricted sales — exhaust patent rights, and 7-1 that international sales also exhaust patent rights. Under its “Return Program,” Lexmark allowed customers to purchase a reduced-price toner cartridge if the customer agreed to use the   Read More »

Posted in IP and Technology Litigation, Patent Litigation | Tagged , ,

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Supreme Court to Consider Patent Exhaustion for International Sales

Last Friday, the U.S. Supreme Court granted certiorari in the patent exhaustion case, Impression Products, Inc. v. Lexmark International, Inc., Docket No. 15-1189.  The Supreme Court’s decision in this case could significantly affect patent and patent-related transactions both domestically and internationally. Generally speaking, under the “patent exhaustion” doctrine, also known as the “first sale” doctrine, a patent holder’s rights in a patented item exhaust or terminate with the initial authorized sale of that patented item.  In other words, once a patented item is sold, the patent holder cannot control the resale, use, or other disposition of that item. Currently, however,   Read More »

Posted in Patent Litigation | Tagged ,

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