Thought Leadership

Intellectual Property Report: January 2017

Client Updates
Supreme Court to Weigh In on Patent Exhaustion
Amy E. Bergeron
The doctrine of patent exhaustion limits a patentee’s ability to control the use of patented articles after an authorized sale of those articles. The Supreme Court recently granted certiorari in Impression Products, Inc. v. Lexmark International, Inc. to review the Federal Circuit’s en banc decision regarding patent exhaustion.1 The specific questions that the Court will review are: (1) whether a patentee can use post-sale restrictions on the article's use or resale to avoid application of the patent-exhaustion doctrine and enforce such post-sale restrictions through the patent law’s infringement remedy; and (2) whether, in light of the Court’s holding in Kirtsaeng v. John Wiley & Sons, Inc.,2 an authorized sale of a patented article that takes place outside the United States exhausts the U.S. patent rights in that article. The Supreme Court’s decision in this case could potentially expand patent owners’ rights and shift the power dynamic between patent owners and potential infringers.

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Dismissed but Not Forgotten – the Scope of an Injunction May Cover Independent Conduct of a Party Dismissed From Litigation
Chris Han
A party that is dismissed from a patent litigation may expect that any subsequent judgment (e.g. against other parties remaining in the litigation) would only affect the dismissed party indirectly. For example, an injunction against a party found liable for infringement could affect future dealings between the liable party and the dismissed party; or the dismissed party could be prohibited from abetting the liable party in continued infringement. In a recent opinion, the Federal Circuit determined that an injunction could potentially apply directly to independent conduct of a dismissed party, signaling that dismissal may not end a party’s interest in the outcome of the litigation.

To read the full article, click here.