Patent Act—Exhaustion

Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189

The doctrine of patent exhaustion provides that, after the first authorized sale of a patented article, the purchaser can use, repair, or resell the article without infringing the patent. The U.S. Court of Appeals for the Federal Circuit has created two exceptions to the exhaustion doctrine, holding that (1) a patentee can preserve its rights in a patented article by selling it subject to explicit use or resale restrictions (and therefore sue a downstream purchaser or user for patent infringement if those restrictions were violated), and (2) the sale of a patented article abroad never exhausts the patentee’s U.S. patent rights in that article. The Supreme Court granted certiorari to review these two exceptions to the exhaustion doctrine. Mayer Brown represents petitioner Impression Products.