Patent Exhaustion and Implied Licenses: Important Recent Developments in the Wake of Quanta v. LG Electronics

more+
less-

A little more than a year ago, the U.S. Supreme Court, in Quanta Computer, Inc. v. LG Electronics, Inc.,[1] clarified important questions regarding the application of the patent exhaustion doctrine to system and method patents. In Quanta, the Court also rejected the notion that patent exhaustion can be avoided by mere restrictive notices to downstream customers where the sale was otherwise authorized by the patent owner.[2] However, other much debated issues surrounding the law of patent exhaustion were not expressly addressed by the Court, most notably:

*whether a “covenant not to sue,” as opposed to a license, amounts to an authorization to sell for purposes of patent exhaustion;

*whether the “conditional sale” doctrine established by the Federal Circuit in its highly controversial Mallinckrodt decision[3] is still viable; and

*the questions raised by the Federal Circuit?s Jazz Photo decisions[4] regarding the application of the patent exhaustion doctrine to sales occurring outside the U.S.

Please see full update for more information.

LOADING PDF: If there are any problems, click here to download the file.

Published In: General Business Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »