Earlier this year, the Federal Circuit ruled en banc in Lexmark v. Impression, the most significant exhaustion ruling since the Supreme Court’s Quanta decision. In response to Impression’s cert. petition, the Supreme Court called for the views of the Solicitor General. The U.S. has now filed its brief, recommending cert. be granted on both questions. Consistent with its views before the en banc Federal Circuit, the U.S. agrees with Judge Dyk’s dissent, and recommends strengthening the exhaustion doctrine, effectively overruling the Federal Circuit’s long-standing decisions in Mallinckrodt and Jazz Photo. The two issues at stake relate to post-sale limits on use and resale, and whether foreign sales exhaust a patentee’s U.S. rights.
The Solicitor General’s recommendations make a cert. grant highly likely in this important case, which goes to the heart of two of the Supreme Court’s favorite patent topics: the scope of the patent right and the extraterritorial effect of U.S. patents. The strategic impact on large multinational businesses, complex licensing deals and so on is potentially enormous. Continue Reading