Lexmark Could Profoundly Impact Patent Exhaustion

December 5, 2016

By: N. Scott Pierce

Law360

Law360The U.S. Supreme Court has just granted a writ of certiorari in the case of Impression Products Inc. v. Lexmark International Inc. The ultimate decision by the court could have a profound impact on the judicial doctrine of patent exhaustion, potentially extinguishing long-standing precedent. Due to the complexity of this case, it is worthwhile summarizing the relevant issues.

Doctrine of Patent Exhaustion

Under the doctrine of patent exhaustion, a patentee’s right to restrict sale of a product are “exhausted” with a first authorized sale: resale is not an infringement. Exhaustion of exclusionary rights under United States patent law is based entirely on the meaning of “authority” in 35 U.S.C. § 271(a), which states:

Except as otherwise provided in this title [35 USC §§ 1 et seq.], whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

 

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December 5, 2016

By: N. Scott Pierce

Law360

Law360The U.S. Supreme Court has just granted a writ of certiorari in the case of Impression Products Inc. v. Lexmark International Inc. The ultimate decision by the court could have a profound impact on the judicial doctrine of patent exhaustion, potentially extinguishing long-standing precedent. Due to the complexity of this case, it is worthwhile summarizing the relevant issues.

Doctrine of Patent Exhaustion

Under the doctrine of patent exhaustion, a patentee’s right to restrict sale of a product are “exhausted” with a first authorized sale: resale is not an infringement. Exhaustion of exclusionary rights under United States patent law is based entirely on the meaning of “authority” in 35 U.S.C. § 271(a), which states:

Except as otherwise provided in this title [35 USC §§ 1 et seq.], whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

 

View a PDF of the full article.

PDF FileView as PDF

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