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Patent Exhaustion First Sale Doctrine Patent Infringement

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine

The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded the doctrine of patent exhaustion. This equitable doctrine prevents a...more

Shook, Hardy & Bacon L.L.P.

Exhausted!: The Supreme Court Weakens Patent Owners’ Rights to Enforce Post-Sale Restrictions on Patented Products

Patent owners have long imposed post-sale restrictions on their patented goods and relied on U.S. patent laws to enforce these restrictions. For instance, companies have sought to enforce “single use” restrictions on their...more

Latham & Watkins LLP

US Supreme Court Says No to Post-Sale Restrictions Under Patent Law

Latham & Watkins LLP on

The Court also holds that patent exhaustion applies to both foreign and domestic sales in a historic decision. Key Points: ..Patent rights are exhausted by sale even if the patentee purports to impose post-sale...more

Fish & Richardson

Exhaustion and the “Right to Repair”: Ownership Rights after Impression Products, Inc. v. Lexmark Intern., Inc.

Fish & Richardson on

Hailed by some as the “right to repair”, on May 30, 2017, the Supreme Court ruled that a seller’s patent rights are not valid beyond the first sale of the patented product. Impression Products, Inc. v. Lexmark Intern., Inc....more

Sands Anderson PC

“First Sale” Exhausts Patent Rights

Sands Anderson PC on

In a case of keen importance to sellers of refurbished products such as auto parts and medical devices, last month, in Impression Products, Inc. v. Lexmark International, Inc., ___ U.S. ___ (2017), the Supreme Court of the...more

Jackson Walker

Supreme Court Holds Sale of Patented Product Exhausts All Patent Rights

Jackson Walker on

In a nearly unanimous opinion issued recently, the U.S. Supreme Court held “a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to...more

Perkins Coie

First Impressions: New Strategies in the New Era of Patent Exhaustion After Impression Products v. Lexmark International

Perkins Coie on

In Impression Products, Inc. v. Lexmark International, No. 15–1189, 137 S. Ct. ___, 2017 WL 2322830 (May 30, 2017), the U.S. Supreme Court held that a patentee’s sale of a product exhausts all of its U.S. patent rights in...more

Burr & Forman

Supreme Court Clarifies Patent Exhaustion Doctrine and Limits Post-Sale Control

Burr & Forman on

In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court held that after a patent holder sells a patented product, the patent holder cannot control the product by way of patent rights. United States...more

Foley & Lardner LLP

Supreme Court Finds Patent Rights Exhausted Overseas

Foley & Lardner LLP on

In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court reversed the en banc decision of the Federal Circuit, and held U.S. patents rights exhausted by the patent owner’s sale of a patented article...more

Clark Hill PLC

For Patent Infringement, Sold Property Is All Yours

Clark Hill PLC on

When do patent rights end? If you buy a patented invention, is it your property in the same way that you can do with a pair of pants as you please after purchasing it? ...more

Womble Bond Dickinson

First Sale Extinguishes Patent Rights: Supreme Court Guts Manufacturer Control Over Secondary Market

Womble Bond Dickinson on

Manufacturers have long used patents, licenses and litigation to deter competitive products and restrict secondary markets in their products. The U.S. Supreme Court just dealt these practices a severe blow, confirming that a...more

Bennett Jones LLP

US Supreme Court Ruling on Exhaustion of Patent Rights is Welcome News for Canadian Exporters of Refurbished Goods

Bennett Jones LLP on

In the United States, once a patentee has sold its product—whether domestically or internationally—its patent rights in that product are exhausted; the patentee can no longer use patent law to control refurbishing or resale...more

Saul Ewing LLP

No Second Bite of the Patent Apple by Patent Owner, Says Supreme Court

Saul Ewing LLP on

On Tuesday, May 30, 2017, the Supreme Court issued a decision in Impression Prods., Inc. v. Lexmark Int’l, Inc., that eliminates a patentee’s patent rights in a product sold by the patentee. The Supreme Court held that “a...more

Nutter McClennen & Fish LLP

Supreme Court Provides Additional Clarity on the Scope of Patent Exhaustion

According to a recent Supreme Court decision, when it comes to the applicability of patent exhaustion, “restrictions and location are irrelevant; what matters is the patentee’s decision to make a sale.” In Impression...more

Foley & Lardner LLP

What the Supreme Court’s Latest Patent Decision Means for Automotive Suppliers

Foley & Lardner LLP on

Although U.S. patent law has long-established limits on enforcement after a patented product has been sold, the technological innovations may put a bulls-eye on the automotive industry for patent litigation. However, when...more

BCLP

The Supreme Court Makes an "Impression": Patent Exhaustion Defined

BCLP on

Earlier this week, the U.S. Supreme Court’s ruling in Impression Prods., Inc. v. Lexmark Int’l, Inc., 581 U.S. ___ (2017) reversed the Federal Circuit’s interpretation of the patent exhaustion doctrine. The Supreme Court held...more

Lathrop GPM

Supreme Court Expands Patent Exhaustion, Leaving Many Unanswered Questions, Including Effects on Copyright Law's First-Sale...

Lathrop GPM on

On May 30, 2017, the United States Supreme Court expanded the concept of patent exhaustion. Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (U.S. May 30, 2017)....more

Dorsey & Whitney LLP

Supreme Court Bolsters Patent Exhaustion Doctrine, Patent Laws Cannot Be Used Against Resellers

Dorsey & Whitney LLP on

The Supreme Court ruled yesterday that Lexmark’s decision to sell its patented printer ink cartridge exhausted all of its patent rights in that cartridge, regardless of any contractual restrictions Lexmark attempted to impose...more

Stoel Rives LLP

Supreme Court Curtails After-Market Reach of Patent Rights

Stoel Rives LLP on

On Tuesday (May 30, 2017), the U.S. Supreme Court curtailed the after-market reach of patent rights. The decision in Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (S. Ct. May 30, 2017) (8-0; 7-1),...more

McDermott Will & Emery

US Supreme Court to Review Patent Exhaustion Doctrine

McDermott Will & Emery on

On December 2, 2016, the Supreme Court of the United States granted cert in a key case regarding the scope of the patent exhaustion doctrine, or “first sale doctrine,” as it relates to (1) sales of a patented item subject to...more

Manatt, Phelps & Phillips, LLP

Intellectual Property Law - April 2016

The Supreme Court Hears Oral Argument Regarding the Standard for Awarding Enhanced Damages in Patent Cases - Why it matters: The U.S. Supreme Court is reviewing the standard for awarding "enhanced" damages in patent...more

Knobbe Martens

Federal Circuit Review | March 2016

Knobbe Martens on

Under O2 Micro, a District Court Must Provide a Claim Construction if the Parties Dispute the Meaning of a Claim Term - In Eon Corp. IP Holdings LLC v. Silver Springs Networks, Inc., Appeal No. 2015-1237, the Federal...more

Fenwick & West LLP

Lingering in Lexmark's wake, uncertainty about the limits of patent exhaustion

Fenwick & West LLP on

According to ten judges of the Federal Circuit, a patent owner’s right to sue for infringement in the United States is not exhausted by sales of products abroad or by sales subject to valid post-sale contractual restrictions...more

McNees Wallace & Nurick LLC

Federal Circuit “Tones Down” Efforts to Expand Patent Exhaustion

In a rare instance in which all judges participated, the Federal Circuit issued a ruling earlier this month, in Lexmark International, Inc. v. Impression Products, Inc., on the legal issue of patent exhaustion for both...more

McDermott Will & Emery

Federal Circuit Precedents on Domestic and International Patent Exhaustion Principles Remain Unchanged (Lexmark Int’l, Inc., v....

McDermott Will & Emery on

The en banc U. S. Court of Appeals for the Federal Circuit issued its long awaited (10-2) decision, reaffirming the court’s prior rulings in Mallinckrodt and Jazz Photo that a seller can use its patent rights to block resale...more

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