Issue: Intellectual Property
Court: U.S. Court of Appeals for the Federal Circuit
I. In light of Kirtsaeng v. John Wiley & Sons, Inc., should this court overrule Jazz Photo Corp. v. International Trade Commission, to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion; and
II. In light of Quanta Computer, Inc. v. LG Electronics, should this court overrule Mallinckrodt, Inc. v. Medipart to the extent it ruled that a sale of a patented article, when the sale is made under a restriction that is otherwise lawful and within the scope of the patent grant, does not give rise to patent exhaustion?
The Federal Circuit has invited briefs in a case where the court is reconsidering its precedents relating to patent exhaustion. The RLC joined a brief asking the appellate court to overturn its rulings and to find instead that patent exhaustion turns on whether there has been an authorized sale of a patented item and not on whether the item was sold domestically or abroad.
The Federal Circuit reaffirmed its precedents set forth in Mallinckrodt v. Medipart ("holding that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied") and Jazz Photo v. International Trade Comm'n ("holding that a U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts in the absence of patentee -conferred authority").
Procedural History & Case Documents: