Impressions Products, Inc. v. Lexmark Int'l, Inc. (15-1189)
argument 15-1189Impressions Products, Inc. v. Lexmark Int'l, Inc.
Supreme Court of the United States
1h 1m
4 speakers
8 chapters
transcribed 7 days ago
official recording ↗
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What is the patent exhaustion (first sale) doctrine and why is it central to Impressions v. Lexmark?
We'll hear argument next this morning, case fifteen, eleven eighty nine, impression products versus Lexmark International.
Mr Pinkers? Thank you, Mr Chief Justice, and may it please the Court. This case brings before the Court two questions regarding the patent exhaustion doctrine, also known as the First Sale Doctrine. As this court said in Bowman, under that doctrine the initial authorised sale of a patented item terminates all patent rights to that item. By exhausting the patentee's monopoly in that item, the sale confers on the purchaser or any subsequent owner the right to use or sell the thing as he sees fit. That principle goes back, of course, to the fifteenth century, the common law refuse to enforce restraints on alienations of chattels based on the fundamental insight that you own the goods that you buy You should be able to do with them what you wish.
And that clouds over Title hurt the marketability of goods and injure commerce and importantly in the patent context allowing these downstream restrictions to be enforced. would preempt secondary markets with which check the patent owners' monopoly power. Let me begin with the first question, which is whether the authorised sale of an article embodying the patent exhausts patent rights with respect to that article. Or whether the patentee may impose restrictions enforceable under the patent laws, such as on resale, repair or reuse. Simply by stating such a restriction. in the sales agreement.
I'm sorry to interrupt you but that limitation is critical, right? Enforceable under patent law?
Enforceable under patent law. We there's no question here that contract law with its limitations would allow the enforcement of of those restrictions if there were a valid contract. uh this is all about whether the patent law remedies apply. The Court's description and application of the doctrine for more than one hundred and fifty years makes clear that such restrictions cannot be enforced under the patent law. Uh not at all.
Are there other examples of really important rules that have not been codified? Wha why hasn't this been codified?
Well I think I think that that there were a number of of uh patent law uh rules that Congress didn't codify it fully or either at all in the nineteen fifty two Act. This was one. The Court in the contributory infringement area, for example, has looked to pre nineteen fifty two law to flesh out the details of contributory infringement that the that Congress didn't specify.
Does the failure to codify mean we should be somewhat cautious? I don't end in and extending it.
Well,
I
I don't think there's a question about extending it. I I think I think uh the courts enunciation of the rule pri in the cases prior to nineteen fifty two was very clear and specific. So I think it was uh there's really no doubt that when Congress enacted the law in nineteen fifty two, it did so with the knowledge that there was the principle uh that I've recited and and the Bowman recitation is consistent with with many, many decisions of this Court dating back to the eighteen hundreds. that say the same thing, that when there is an authorised sale, the patent rights are exhausted, the Court said uh in some cases the the article falls out of the patent laws and all that applies is state law. Um and most importantly the sole the Court's sole decision upholding these sort of restrictions, uh A B Dick, was expressly overruled a few years later in the motion picture patents case.
So we not only have the court's consistent enunciation of the doctrine we have the fact that there was this deviation and then an immediate correction. So
Besides contributory negligence, what other patent ideas? were not codified.
Um Uh the misuse doctrine I don't believe was was codified uh initially, although there have been some subsequent uh amendments that have done that. Um Other patent defences. There were there were years, for example, as the government points out in its brief, Between uh the eighteen the late eighteen hundreds and nineteen fifty two there was no uh infringement wasn't exp explicitly referenced in the Patent Act, but everyone knew that the common law rules, the rules that have been developed under prior statutes continued to apply and that there was a remedy for infringement and what its contours were were specified.
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Chapters
8 chapters
1
What is the patent exhaustion (first sale) doctrine and why is it central to Impressions v. Lexmark?
0:00–8:06
2
How have courts historically interpreted the exhaustion rule and why hasn’t Congress codified it?
8:06–14:52
3
Does an authorized sale of a patented item abroad trigger U.S. patent exhaustion?
14:52–24:16
4
Can patent owners enforce post‑sale restrictions on products that are imported into the United States?
24:16–33:10
5
When can post‑sale restrictions be enforced under contract law rather than patent law?
33:10–39:42
6
What would a “single‑use only” sticker mean for downstream buyers and sellers?
39:42–47:17
7
What are the policy risks of allowing patent owners to impose downstream restrictions?
47:17–54:15
8
What resolution does the Court propose for the domestic and international exhaustion disputes?
54:15–1:01:58