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Patent Exhaustion Subcommittee

NEW - July 2017 -> "Lexmark" Patent Law Committee Newsletter

NEW - July 2017 -> Impression Prods, Inc. v. Lexmark Int’l, Inc.

November 2016 - > Patent Exhaustion Condensed Law Summary

November 2016 - > Patent Exhaustion FAQ (with Discussion)

Latest News:

·         June 20, 2016 Supreme Court invites Solicitor General to file a brief expressing the views of the United States for the pending certiorari petition in Impression Products, Inc. v. Lexmark International, Inc.
·         October 12, 2016, Solicitor General files an Amicus brief suggesting the Supreme Court review and reconsider the conditional sale doctrine of Mallinckrodt and the foreign exhaustion doctrine articulated in Jazz Photo.

This subcommittee is focused on the Patent Exhaustion Doctrine and whether the doctrine should be codified or remain common law. This subcommittee will further provide a forum for discussion and review of developments relating to exhaustion of patent rights in the context of contractual rights, such as sales and licenses. In particular, this subcommittee will monitor pending and decided cases of the Federal Circuit, Supreme Court, and District Courts; highlight important developments in the law relating to patent exhaustion; analyze potential conflicts and contradictions in the law, including, but not limited to, conflicting interpretations of Supreme Court and the Federal Circuit (see, e.g., Quanta and Mallinckrodt); analyze statistics relating to decisions involving patent exhaustion issues, such as percentage of rulings in favor of defendants asserting patent exhaustion, percentage of rulings in favor of defendants on particular grounds, tendencies of particular judges or courts, trends in statistics over time, or any other statistics that may be useful for practitioners; assess policies or practices for contracting parties seeking to avoid or track patent exhaustion in business negotiation settings; discuss “open issues” for which there is not clear precedent, which may arise, for example, from changes in the law (e.g., legislative changes), from Federal Circuit decisions that do not fully address an issue, from conflicting decisions from District Courts, or from old precedents that may not be consistent with more recent trends; and pursue any other topics of interest relevant to patent exhaustion.

Contact Robert if you are interested in joining and contributing to this subcommittee.