To Readers of The World in US Courts:

On May 30, the US Supreme Court issued a decision in Impression Products, Inc. v. Lexmark Int'l, Inc., which changed the settled law of "international patent exhaustion"—whether a US patent infringement suit may be brought in connection with the importation into the US  of a patented product that has already once been sold.  The decision makes clear that any sale of a product anywhere in the world "exhausts" the US patentholder's rights, regardless of restrictions on resale that the patentholder may impose on its customer by contract.  Such once-sold products can thus be re-sold to customers in the US without risk of a patent infringement claim (although breach-of-contract remedies might still be available).  The US patentholder's right to sue for infringement is similarly exhausted by a licensee's sale of a product  anywhere in the world—so long as that sale is within the scope of the license.  As with direct sales by the patentholder, products sold by the licensee (or the licensee's customers) to customers in the US would not be subject to a patent infringement claim, although contractual remedies might exist.

This is only a general description of the holding of the case, and we will publish a more detailed discussion of the issue in our next quarterly report.