Impression Products, Inc. v. Lexmark Intern., Inc.

This decision, discussed in the current Holman Report, abrogates the Federal Circuit's decisions that had previously defined the limits of domestic and international patent exhaustion, Mallinckrodt v. Medipart and Jazz Photo Corp. v. International Trade Comm'n, respectively. In Mallinckrodt, the Federal Circuit had held that a patent owner can impose conditions on the use, reuse, and/or resale of a patented article that has been the subject of an authorized sale, and enforce those restrictions through a patent infringement action, so long as the restrictions are clearly communicated to the purchaser and within the scope of the patent grant or otherwise justified. Jazz Photo held that a U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not thereby authorize the buyer to import the article and sell and use it in the United States. In Impression Products, the Supreme Court disagreed, and held the Court's admonition in Quanta Computer v. LG Electronics (decided in 2008), that "the initial authorized sale of a patented item terminates all patent rights to that item'' applies even with respect to conditional and international sales.