SCOTUS Legal Briefs

October Term 2016 · Docket 15-1189

Does a foreign sale exhaust U.S. patent rights?

Lexmark sold toner cartridges abroad with use restrictions. Impressions resold them in the U.S. Lexmark sued for infringement. The lower court sided with Lexmark.

Official caption
Impressions Products, Inc. v. Lexmark Int'l, Inc.
Latest argument session
Latest official Court activity
Latest verified event
Argued
Sources analyzed through
Official Transcript

Verified source milestones

  1. — An official oral-argument transcript was verified.
  2. — An official oral-argument transcript was verified.

The arguments, in order

This case may have been argued more than once. Each entry below uses that session's official transcript. Later arguments do not erase earlier ones.

  1. Argument 1 ·

    What happened at the argument

    Mr. Pincus argued the exhaustion doctrine terminates all patent rights after an authorized sale. He cited the Bowman case to support this broad interpretation.

    Mr. Stewart addressed the domestic exhaustion issue first. He responded to questions about why the doctrine lacks codification.

    Mr. Trela agreed with the government on one point. He stated the Federal Circuit properly looked to the statute for the doctrine's limits.

    Justice Alito questioned the strategy of disregarding a rule adopted by the Federal Circuit. He noted this approach seemed counterintuitive for patent holders.

    Read the official transcript for this argument · Official argument details

    Sources used for this argument breakdown

A citizen's guide to the whole case

What this case is about

The case tests the patent exhaustion doctrine. This doctrine limits patent rights after an authorized sale. The core dispute involves sales made outside the United States.

Official sources for this section

How the case got here

The Supreme Court heard oral argument in this case on March 21, 2017.

Official sources for this section

What each side wants

Impressions wants the Court to hold that a foreign authorized sale exhausts U.S. patent rights. This would allow the resale of imported goods without infringement liability.

Lexmark wants the Court to hold that a foreign sale does not exhaust U.S. patent rights. This would allow patent holders to enforce use restrictions on imported goods.

Official sources for this section

What each side says

Impressions argues the exhaustion doctrine applies regardless of where the sale occurs. They contend the initial authorized sale terminates all patent rights to that specific item.

Lexmark argues the exhaustion doctrine is limited by statute. They contend the patent holder retains the right to restrict use of items sold under foreign laws.

Official sources for this section

What the justices asked

Justice Kennedy asked why the exhaustion doctrine has not been codified by Congress.

Justice Breyer asked if a patentee can restrict use of a widget bought in Bavaria under a U.S. patent after a foreign sale.

Official sources for this section

Why it matters

This case defines the geographic scope of patent exhaustion. It determines whether patent holders can control the resale of goods sold abroad. The outcome affects the global trade of patented products. It shapes the balance between patent rights and free commerce.

Official sources for this section

What happens next

This article currently covers the argument record. Use the official docket link for later case activity.

Official sources for this section

Official Court provenance

Official docket and case history · Official Supreme Court oral-argument detail page

Title and summary sources

Revision history

  1. Revision 1 · Official Transcript ·

    Correction: Rewritten to the concise citizen-facing editorial standard.

  2. Revision 2 · Official Transcript ·

    Correction: Migrated to the dated official Court activity contract without model use.

Download this sanitized case as JSON