Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Tamlin Bason
April 15 — The U.S. Court of Appeals for the Federal Circuit on April 14 sua sponte ordered an en banc hearing on whether the Supreme Court's 2012 Kirtsaeng ruling should cause the appeals court to revisit its own precedent “that a sale of a patented item outside the United States never gives rise to United States patent exhaustion”.
In Kirtsaeng, a 6-3 majority held that the Copyright Act's first sale doctrine, as codified at 17 U.S.C. § 109(a), applies to copies of works legally made overseas and imported into the United States without the permission of the copyright holder.
Thus the importer—a college student in that case—could not be liable for copyright infringement for reselling in the United States textbooks that he had purchased, at reduced prices, in Asia, the court held.
On March 6, a Federal Circuit panel heard arguments in a suit where Lexmark has alleged that Impression has resold remanufactured patented toner cartridges in the United States that were first sold outside of the country.
Following the argument, a poll was taken and a majority of judges in active service voted for sua sponte en banc consideration.
In addition to assessing Kirtsaeng's impact on the international exhaustion doctrine, the appeals court will also consider whether it should overrule its “conditional” sales precedent in light of the Supreme Court's 2008 ruling in Quanta.
The parties were asked to file new briefs to address:
(a) The case involves certain sales, made abroad, of articles patented in the United States. In light of Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), should this court overrule Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001), to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion.
(b) The case involves (i) sales of patented articles to end users under a restriction that they use the articles once and then return them and (ii) sales of the same patented articles to resellers under a restriction that resales take place under the single-use-and-return restriction. Do any of those sales give rise to patent exhaustion? In light of Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), should this court overrule Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), to the extent it ruled that a sale of a patented article, when the sale is made under a restriction that is otherwise lawful and within the scope of the patent grant, does not give rise to patent exhaustion?
Impression's brief is due within 45 days of the Federal Circuit's order. Lexmark's brief is due 30 days after that. The Federal Circuit specifically invited the Department of Justice to brief the issues, and said other interested parties could filed amici curiae briefs without consent of the court.
Lexmark is represented by Timothy Colin Meece of Banner & Witcoff, Ltd., Chicago. Impression is represented by Edward F. O'Connor I of Avyno Law P.C., Encino, Calif.
To contact the reporter on this story: Tamlin Bason in Washington at email@example.com
To contact the editor responsible for this story: Anandashankar Mazumdar at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)