Four years after fully embracing international copyright exhaustion in Kirtsaeng v. John Wiley & Sons, Inc., the U.S. Supreme Court has finally taken up the issue of patent exhaustion. In Impression Products, Inc. v. Lexmark International Inc., the Court has been asked to answer two questions:
- Whether a 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.
- Whether, in light of [the] 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.
This post looks at the second of these questions. Continue Reading