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After a chilly, even hostile reception at the appellate level, the US Supreme Court appears warmly open to domestic patent exhaustion. As for international patent exhaustion after the first sale of a cartridge, it\u00a0appears ready to overturn the lower court on that issue as well.<\/p>\n
Oral arguments in the case of Impression Products vs. Lexmark, Inc., were held last Tuesday morning. Lexmark has been using this unsettled area of patent law to threaten \u2013 or sue \u2013 remanufacturers when they \u201cviolate\u201d the return program by remanufacturing cartridges, or buy cores first sold in Canada or overseas for remanufacturing.<\/p>\n
An incredulous industry and public wondered how this could be legal? Even Justice Alito pondered on Tuesday, \u201cWhy isn\u2019t this codified?\u201d But that is a better question for Congress than aftermarket attorneys.<\/p>\n
The Supreme Court seemed to be most vexed by the U.S. government\u2019s answer to the question of whether to exhaust patents that were first sold outside the U.S. The Solicitor General suggested that a foreign first sale presumptively exhausts US patent rights, unless the US patent owner expressly reserves those rights in the terms of the foreign sale. Both Justices Breyer and Kennedy wondered how that could be done. Kennedy said, \u201cDo we put a sticker [on the product]?” If so, that would be \u201ca boon for sticker companies.\u201d<\/p>\n
Fellow aftermarket attorneys left the court stating that the first issue would most likely be \u201ca slam dunk\u201d win for the aftermarket. The question of international exhaustion of patent rights will be harder to prevail upon. However, Justice Sotomayor stated that she saw no reason to treat patent rights differently than copyrights, which were recently deemed exhausted in another.<\/p>\n
With most of the remaining eight justices indicating they favor the clear-cut case for exhaustion as well, the aftermarket may soon have these impediments to domestic and international commerce removed. The sticker market will probably have to look elsewhere for its boost.<\/p>\n","protected":false},"excerpt":{"rendered":"
After a chilly, even hostile reception at the appellate level, the US Supreme Court appears warmly open to domestic patent exhaustion. As for international patent exhaustion after the first sale of a cartridge, it\u00a0appears ready to overturn the lower court on that issue as well. Oral arguments in the case of Impression Products vs. Lexmark, Inc., were held last Tuesday morning. Lexmark has been using this unsettled area of patent law to threaten \u2013 or sue \u2013 remanufacturers when they \u201cviolate\u201d the return program by remanufacturing cartridges, or buy cores first sold in Canada or overseas for remanufacturing. An incredulous industry and public wondered how this could be legal? Even Justice Alito pondered on Tuesday, \u201cWhy isn\u2019t this codified?\u201d But that is a better question for Congress than aftermarket attorneys. The Supreme Court seemed to be most vexed by the U.S. government\u2019s answer to the question of whether to exhaust patents that were first sold outside the U.S. The Solicitor General suggested that a foreign first sale presumptively exhausts US patent rights, unless the US patent owner expressly reserves those rights in the terms of the foreign sale. Both Justices Breyer and Kennedy wondered how that could be done. Kennedy said, \u201cDo we put a sticker [on the product]?” If so, that would be \u201ca boon for sticker companies.\u201d Fellow aftermarket attorneys left the court stating that the first issue would most likely be \u201ca slam dunk\u201d win for the aftermarket. The question of international exhaustion of patent rights will be harder to prevail upon. However, Justice Sotomayor stated that she saw no reason to treat patent rights differently than copyrights, which were recently deemed exhausted in another. With most of the remaining eight justices indicating they favor the clear-cut case for exhaustion as well, the aftermarket may soon have these impediments to domestic and international commerce removed. The sticker market will probably have to look elsewhere for its boost.<\/p>\n","protected":false},"author":32,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[79,1650,1638],"tags":[3058,3008,228,439],"_links":{"self":[{"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/posts\/23221"}],"collection":[{"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/users\/32"}],"replies":[{"embeddable":true,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/comments?post=23221"}],"version-history":[{"count":2,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/posts\/23221\/revisions"}],"predecessor-version":[{"id":23223,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/posts\/23221\/revisions\/23223"}],"wp:attachment":[{"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/media?parent=23221"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/categories?post=23221"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.enxmag.com\/twii\/wp-json\/wp\/v2\/tags?post=23221"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}