On May 30, 2017, in Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court held that a domestic or foreign sale of a patented product exhausts all U.S. patent rights in that product.1 The case was summarized in our previous WSGR Alert issued on May 31, 2017.
Life sciences companies have routinely and customarily placed limitations on the post-sale use of patented items. These restrictions are often outlined in label licenses, which are commonly used in the life sciences industry to, for example: a) limit use of a product to research and not diagnostic purposes; b) restrict resale; or c) ensure that no implied license extends from, e.g., an instrument to reagents.
Lexmark, however, clearly indicated that post-sale restrictions of patented items could continue to be controlled and enforced through label licenses (e.g., through contract law). Here, we discuss label licensing by life sciences companies that may have previously relied on, at least in part, patent infringement lawsuits to enforce post-sale restrictions on patented items.
For example, a company selling a research tool (e.g., a polymerase chain reaction (PCR) kit) would condition the sale upon a purchaser agreeing to a label license stating that the research tool was for research use only (RUO). The label license would also state that if the purchaser wanted to use the research tool for other purposes, a separate license would need to be negotiated.2 Through use of the label license, the seller granted the purchaser a limited right under its patents—the limitations were customarily specified in the label license.
In Lexmark, the Supreme Court held that a domestic or foreign sale of a patented product by a company exhausts all U.S. rights in patents covering the sold product (i.e., patent exhaustion).3 Nevertheless, such companies can still effectively employ label licenses to limit, by contract, the post-sale use of patented products.
At the outset, we note that patent exhaustion is limited to those U.S. patents covering the sold product. Thus, for example, the sale of a PCR kit would likely not exhaust a company's U.S. patent rights in a PCR machine that conducts amplification and detection. Similarly, the sale of a PCR machine would not exhaust a company's U.S. patent rights in PCR kits.
Label licenses, post Lexmark, remain enforceable under contract law. Creative and effective solutions involving the use of label licenses therefore take on increased importance. For example, a label license could specify that violation of its limitations, as determined by the seller in its sole discretion, will result in the buyer agreeing—as a contract remedy—to immediately stop using the seller's product. Additionally, a label license could stipulate that a purchaser's violation of the label license, as determined by the seller in its sole discretion, will result in the seller having the right to automatically cut off, e.g., a reagent or kit supply chain.
Research tools and other products may be sold in and outside of the U.S., and foreign jurisdiction laws relating to contracts may have significant differences from U.S. contract laws. Thus, companies that sell products outside of the U.S. may consider having separate label licenses (distinct from label licenses for U.S. sales) that account for and effectively address these differences. Regardless, issues including venue,4 personal jurisdiction, governing law, conflict of laws, restrictions on the transfer of the product from the purchaser to third parties, and remedies for breach should all be carefully considered and specifically enumerated.
Finally, as an alternative strategy to control patented product use, companies may consider leasing rather than selling selected patented products (e.g., PCR machines). A leasing strategy may not be a practical solution for all products, particularly disposables (e.g., reagents and kits). Nevertheless, for certain products, leasing (as opposed to selling) would preserve a company's right to sue for patent infringement should a lease be violated, in addition to claims for breach of contract.
In the wake of Lexmark, the creative crafting of enforceable label licenses and the strategic use of leases take on increased importance for companies that wish to limit the use of patented products.
