In Lexmark Int’l v. Impression Prods., the Federal Circuit addressed whether recent Supreme Court jurisprudence overruled two prior Federal Circuit decisions holding that:
- a sale subject to a clearly communicated single-use/no-resale restriction does not trigger the doctrine of patent exhaustion, and
- foreign sales do not trigger exhaustion.
On both fronts, the Federal Circuit ruled that recent Supreme Court opinions did not affect its earlier holdings.
What This Means to You
- Unless and until the Supreme Court speaks on these issues, remember:
- Clearly communicated, otherwise lawful single-use and no-resale restrictions can circumvent the doctrine of patent exhaustion; and
- Foreign sales do not exhaust U.S. patent rights.