US Supreme Court reverses Federal Circuit’s precedent on patent exhaustion

Abstract

Impression Products Inc. v Lexmark International Inc., No. 15–1189, 581 US ___ (2017), Supreme Court of the United States, 30 May 2017 The US Supreme Court held that ‘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 impose or the location of the sale.’ Justice Ginsburg issued her own opinion, in which she concurred ‘in the Court’s holding regarding domestic exhaustion’ but dissented ‘from the Court’s holding on international exhaustion.’ Impression Products reverses precedent of the United States Court of Appeals for the Federal Circuit on both domestic and international patent exhaustion. A US patent grants the patentee an exclusive right to exclude others from ‘making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.’ 35 USC § 154(a); see also 35 USC § 271(a).