The Supreme Court has again relisted Impression Products petition for writ of certiorari – further raising the prospect that the exhaustion case will be heard. Ticking almost all of the boxes, Impression has top Supreme Court counsel (Andy Pinkus); Support from the SG; Prior Supreme Court cases in tension with the Federal Circuit’s holdings; and Plenty of Amicus Support. The court will again consider the petition at its December 2 conference.
The following two questions are presented:
- Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy; and
- Whether, in light of this Court’s holding in Kirtsaeng v. John Wiley & Sons, Inc. that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article – authorized by the U.S. patentee – that takes place outside of the United States exhausts the U.S. patent rights in that article.
My hope is that the court will use this as an opportunity to clarify the unduly confusing Quanta decision.
Other Supreme Court News: Cert denied in DBN and DataTreasury. December 6 oral arguments in LifeTech.