The court then turned to the only Supreme Court case on foreign exhaustion, Boesch v. The parties each appealed. The district court held, however, that the exhaustion doctrine did not apply to the cartridges that Lexmark had sold abroad. A “Regular Cartridge” is sold at “list price” and confers an absolute title and property right on the buyer. Lexmark explicitly left open several fact-specific questions, including i what happens if someone acquires a patented article with “less than actual knowledge” of the restrictions placed on the original sale by the patent owner and ii when would a foreign buyer have an “implied license” to sell in the United States, independent of patent exhaustion. The court began by distinguishing the Patent Act’s and Copyright Act’s respective approaches to infringement.

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LGE had not limited Intel’s license to manufacture the patented product, although it imposed contractual obligations on Intel. Dennis Crouch, in Patently-O commented on the issues and provided a summary of the merits briefs filed in the Supreme Court as of January 31, Foreign governments might “prohibit sellers from stating reservations of rights that would make importation into and sale in the United States more difficult.

Toner cartridge for Lexmark MS dhn

That is governed by US law. In this part of the dissent, Judge Dyk argued for a nuanced balance that called c617 different results depending on whether the patentee was responsible for the sale abroad that was alleged to trigger exhaustion.

Articles with short description Articles with obsolete information from May All Wikipedia articles in need of updating. Supreme Court, reversing a decision of the Federal Circuitheld that the exhaustion doctrine prevented Lexmark’s patent infringement lawsuit, although Lexmark could enforce restrictions on use or resale of its contracts with direct purchasers under regular contract law but not as a patent infringement lawsuit.


Lexmark Toner & Ink Cartridges

I would suggest that those activities are incredibly beneficial to our society in terms of resource allocation and avoiding waste as well as empowering citizens and avoiding anticompetitive market behavior. And may well again. I purchased my last couple of smart phones through the used market — and have also repaired them several times. In this part of its opinion, the Federal Circuit reaffirmed it Jazz Photo opinion and rejected contentions that Kirtsaeng had undermined the basis for Jazz Photo.

While some of the foreign-sold cartridges were Regular Cartridges and some were Return Program Cartridges, this branch of the case does not involve any distinction among the two types of imported cartridges. That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale.

In contrast, the Patent Act contains no exhaustion provision.

It affirms that patent holders have wide latitude to segment and control distribution in the market channels for products covered by patents. The rights that Boesch had under German law did not entitle him to import the lexmarj into the US. Also, the printer will not operate with a Return Program Cartridge that has been refilled by a third party.

Masia see the decision as “pro-patent owner” but warn again premature celebration:. Nix, and Daniel Kazhdan also point to unresolved issues over which patent owners “must still be cautious”:.

In this part of its opinion, the Federal Circuit reaffirmed its Mallincrodt decision and rejected contentions that Quanta had silently overruled it. In the present case, Lexmark made the foreign sales and failed to expressly reserve its US rights; therefore, the sale exhausted the patent rights. Lexmark embraces a very strong view of patent rights and a narrow view of the scope of exhaustion. Similarly, in United States v.


The US courts found Boesch liable. Reviewing them, it found that although they used sweeping language that a patentee’s sale of the patented product placed it beyond the reach of the patent, so that no post-sale restriction could be enforced under the patent laws, that language went beyond the actual facts of the cases.

The first branch of the case turns on the legal status of these post-sale restrictions. A “Regular Cartridge” is sold at “list price” and confers an absolute title and property right on the buyer. The government also argued that the decision of Jazz Photo Corp.

Under Lexmark’s program, customers who agree to the restriction pay a lower price than those who do not. Cukierski and Adam H. Mallinckrodt has been the governing case law since and has been reiterated in subsequent precedent.

When Graff imported the product into the US, Boesch sued for infringement. It said that international exhaustion did not apply to patents because Kirtsaeng v.

Dyk argued for “put[ting] the burden on the U. Even so, the court left open the possibility that foreign sales, under the right circumstances, may incorporate an implied license to import and use the product within the United States. It has passed beyond the scope of the patentee’s rights.