Navigation
In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court held that first-sale patent exhaustion applies to toner cartridges sold by Lexmark in the United States as well as overseas.
Stated the court (Chief Justice Roberts):
On cross-boarder patent exhaustion, the court stated:
Justice Ginsberg dissented, stating:
A foreign sale, I would hold, does not exhaust a U.S. inventor's U.S. patent rights.
[. . .]
U.S. patent protection accompanies none of a U.S. patentee's sales abroad – a competitor could sell the same patented product abroad with no U.S.-patent-law consequence. Accordingly, the foreign sale should not diminish the protection of U.S. law in the United States.
[. . .]
The majority disagrees, in part because this Court decided, in Kirtsaeng v. John Wiley & Sons, Inc., . . . that a foreign sale exhausts U.S. copyright protectoins. [. . .] But even if I subscribed to Kirtsaeng's reasoning with respect to copyright, that decision should bear little weight in the patent context. [. . .] The Patent Act contains no analogue to 17 U.S.C. §109(a), the Copyright first-sale provision analyzed in Kirtaeng. More importantly, copyright protections, unlike patent protections, are harmonized across countries.
In Helferich Patent Licensing v. NYTimes and JCPenney (Fed. Cir. 2015), the Federal Circuit found that content providers such as the New York Times must pay a patent royalty to Helfereich, who owns a patent for sending and receiving alerts to mobile phones, despite the fact that the manufacturer of the mobile phones at issue had already licensed the patents.
The Supreme Court reversed the Fed. Cir., in Quanta Computer Inc., et al. v. LG Electronics, Inc. For a complete background to this case, refer to the LG v Quanta page. The following summarizes the Court's findings:
Legal principle: “The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item.”
The S.Ct. today denied review of McFarling, leaving a Federal Circuit decision in place holding that the patent exhaustion doctrine doesn't apply against next-generation seeds produced by legally-purchased patented seeds.
On September 25, 2007, the Supreme Court granted cert. in Quanta v. LG Electronics and oral arguments will be heard on January 16, 2008.