Federal Circuit Bolsters Patent Exhaustion Doctrine in Lexmark Ruling
- February 18, 2016
Last week, the Federal Circuit upheld two of its long-standing rules on patent exhaustion in an en banc decision in Lexmark Int’l, Inc. v. Impression Prods., Inc. (14-1617, 14-1619). The decision reaffirms the appeal court’s 1992 holding in Mallinckrodt, ruling that if a patentee sells a patented article with restrictions on resale and reuse that are conveyed to a buyer at the time of sale, the patentee may sue for infringement when the buyer violates these restrictions. The en banc panel also found that the US Supreme Court’s 2013 Kirtsaeng decision on copyright exhaustion does not apply to patent law, upholding the Federal Circuit’s 2001 decision in Jazz Photo that the sale of a patented item in a foreign country does not exhaust a patentee’s US patent rights on that item.