Impression Products, Inc. v. Lexmark International, Inc. (U.S. Supreme Court)

The patent exhaustion doctrine holds that “the initial authorized sale of a patented item terminates all patent rights to that item.” In this case, the Federal Circuit held that a patentee may nevertheless impose post-sale restrictions on an article’s use or resale and enforce such restrictions by means of the patent laws. The U.S. Supreme Court has granted our petition for certiorari. In our opening brief, we argue that the Federal Circuit’s decision is inconsistent with over one hundred and fifty years of Supreme Court jurisprudence regarding patent exhaustion. It also permits patentees to quash competition in secondary markets simply by imposing restrictions on the sale or use of patented articles.

The Federal Circuit also held that sales of patented articles that occur abroad do not exhaust U.S. patent rights. We argue in our opening brief that the Federal Circuit’s decision on this point is inconsistent with the Court’s precedents, including Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351 (2013), which recognized in the copyright context that the common law doctrine against restraints on alienation applies internationally. The Federal Circuit’s rule also creates a serious burden on trade and international supply chains by requiring businesses to trace the patent rights embodied in every component or part that they purchase in other countries.



Petition for Certiorari

Reply Brief

Supplemental Brief

Brief for Petitioner