December 2, 2016
UPDATE: Today the U.S. Supreme Court granted a writ of certiorari in Impression Products, Inc. v. Lexmark International, Inc. The Court will address the following two questions involving domestic and international patent exhaustion:
1. Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy.
2. Whether, in light of this Court’s holding in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363 (2013), that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article—authorized by the U.S. patentee—that takes place outside of the United States exhausts the U.S. patent rights in that article.
Our alert summarizing the Federal Circuit’s February 2016 ruling in this case can be found here.
Fitch Even attorneys will report once the Court has issued its opinion.
Fitch Even IP Alert®