Patent Exhaustion (Intellectual Property Law Series)

THIS CASEBOOK contains a selection of 22 U. S. Court of Appeals decisions that analyze and interpret the doctrine of patent exhaustion. The selection of decisions spans from 2003 to the date of publication.

Patent exhaustion is an affirmative defense to a claim of patent infringement, ExcelStor Technology, Inc. v. Papst Licensing GMBH & Co. KG, 541 F.3d 1373, 1376 (Fed.Cir.2008), and like other issues in which there are no disputed factual questions, may be properly decided by summary judgment. See TransCore v. Elec. Transaction Consultants, 563 F.3d 1271, 1274 (Fed.Cir.2009). "The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item." Quanta, 553 U.S. at 625, 128 S.Ct. 2109. The rationale underlying the doctrine rests upon the theory that an unconditional sale of a patented device exhausts the patentee's right to control the purchaser's use of that item thereafter because the patentee has bargained for and received full value for the goods. See Princo Corp. v. ITC, 616 F.3d 1318, 1328 (Fed.Cir.2010) (en banc). Keurig, Inc. v. Sturm Foods, Inc., 732 F. 3d 1370 (Fed. Cir. 2013).

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