IP at the Supreme Court Series: Impression Products, Inc. v. Lexmark International, Inc.
March 21, 2017
4:00pm| Room Y115
Reception to Follow
In PIJIP’s ongoing Supreme Court Series, a panel of counsel for amici and parties will discuss the case on the afternoon following oral argument before the Court.
Issue:
Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent-exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy; and (2) whether, in light of this court’s holding in Kirtsaeng v. John Wiley & Sons, Inc. that the common-law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article – authorized by the U.S. patentee – that takes place outside the United States exhausts the U.S. patent rights in that article.
Panel:
- Prof. Michael Carroll, American University Washington College of Law (Moderator)
- Paul Hughes, Mayer Brown, Counsel for Petitioner
- Ariel Lavinbuk, Robins, Russell, Englert, Orseck, Untereiner & Sauber LLP, representing Costco Wholesale Corp. on amicus brief
- George Hicks, Kirkland & Ellis LLP, representing International Business Machines Corp. (“IBM”) on amicus brief
Issue:
(1)Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent-exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy
(2)Whether, in light of this court’s holding in Kirtsaeng v. John Wiley & Sons, Inc. that the common-law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article – authorized by the U.S. patentee – that takes place outside the United States exhausts the U.S. patent rights in that article.
UPDATE:
Decision: May 30, 2017
Argument: Transcript; Audio