Impression Products, Inc. v. Lexmark International, Inc., U.S., No. 15-1189, amicus brief filed 1/24/2017 January 24, 2017

The Supreme Court's decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of international patent exhaustion and conditional sales, AIPLA argued to the Supreme Court in a January 24, 2017 amicus brief.

The brief explains that Kirtsaeng, interpreting a copyright statute stating the “first sale” doctrine, does not control the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992).