“The case considered two significant issues relating to patent exhaustion: whether post-sale restrictions can prevent the application of patent exhaustion, and whether foreign sales should be treated differently than domestic sales, said Baker Botts’ Paul Ragusa, IP litigation partner in New York. “ The Court answered both questions in the negative.”
“The ruling particularly hurts inventors who sell reusable products, such as the toner cartridges that were at issue in the case,” said Michael Hawes, IP litigation partner in Houston.
Baker Botts’ analysis on the Court’s ruling reports Chief Justice Roberts authored the majority opinion, which reversed an en banc decision of the Federal Circuit, and 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.”
With over 180 IP lawyers and patent professionals, holding over 200 technical degrees, Baker Botts has an incredibly deep bench of practitioners with a wealth of experience in patent litigation, patent prosecution and post-grant proceedings. Learn more about Baker Botts’ IP practice.
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