Posts Tagged: "Kirtsaeng v. John Wiley & Sons"

Supreme Court of the United States to Hear Oral Arguments in Patent Exhaustion Case

On March 21, 2017, the Supreme Court of the United States will hear oral arguments for the case of Impression Products, Inc. v. Lexmark International, Inc. The Court will decide: (i) whether the patent exhaustion doctrine applies in instances where a patented article is sold by the patent holder subject to a lawful and clearly communicated post-sale restriction; and (ii) whether the foreign sale of a U.S. patented article, authorized by the patent holder, exhausts the patent holder’s U.S. patent rights in that article.

Nancy L. Urizar, Ph.D.

March 19, 2017

Restricted Sales Do Not Exhaust Patent Rights Under Supreme Court Rulings

The Federal Circuit took the case en banc to review the applicability of the patent exhaustion doctrine under Mallinckrodt and Jazz Photo, in view of the Supreme Court’s decisions in Quanta and Kirtsaeng. The Federal Circuit affirmed the holdings in Mallinckrodt and Jazz Photo, and distinguished them from the Supreme Court’s decisions. In Quanta, the Supreme Court was reviewing whether a patentee’s rights in a product were exhausted by a licensee’s sale of a product.

Robert Schaffer & Joseph Robinson

March 1, 2016

SCOTUS Adopts International Copyright Exhaustion in Kirtsaeng

Tuesday, in Kirtsaeng v. John W. Wiley and Sons, Inc., the Supreme Court held 6-3 that the first sale doctrine of Section 109(a) of the Copyright Act trumps a copyright owner’s right under Section 602(a)(1) to bar importation of copies when they were made and sold outside the United States. The Court appropriately rejected a cramped geographic reading of “lawfully made under this title,” but largely gutted the right of copyright owners under Section 602(a)(1) to bar importation of copies. Along the way, the Court unequivocally adopted international copyright exhaustion without a lick of statutory support or evidence of Congressional intent. Given the Court’s willingness to find international exhaustion even in the face of statutory language limiting parallel imports under the Copyright Act, it wouldn’t be surprising to see the Court fully embrace international patent exhaustion in the future, since there’s even less statutory basis to bar its adoption.

Kevin Tottis

March 21, 2013