On February 12, 2016, the United States Court
of Appeals for the Federal Circuit issued its
en banc (where a case is heard before all the
judges of a court) decision Lexmark International, Inc.
v. Impression Products, Inc., which confirmed that, despite
recent decisions of the United States Supreme
Court supporting exhaustion of intellectual property
rights after the initial sale, the Federal Circuit’s patent
exhaustion jurisprudence (or so called, “patent
non-exhaustion doctrine”) enumerated in its prior
rulings, Mallinckrodt, Inc. v. Medipart, Inc., and Jazz
Photo Corp. v. International Trade Comm’n, remains
good law (at least before the Supreme Court decides
to explicitly override the two decisions) with respect to
the following two issues, respectively:
(1) whether accompanying product sales with lawful
and clearly communicated restrictions could avoid
patent exhaustion within such declared limits; and
(2) whether foreign sales authorized by the owner
could exhaust the owner’s U.S. patent rights
when patented products are shipped back to the
United States.