A Case of Clear "Impression"

In Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (2017), the Supreme Court erased a line between foreign and domestic sales, while drawing a bright one between sales and licenses, thus firmly establishing patent exhaustion upon first sale. The Court concluded a patentee cannot reserve rights under patent law beyond an initial sale, even for foreign sales, which occur where U.S. patent laws do not apply. In reaching this conclusion, the Court distinguished patent licenses, which do not involve alienation of goods.

The Patented Goods

Lexmark sells patented printer cartridges under two scenarios: (1) outright sale without restrictions, and (2) a heavily discounted sale, subject to the purchaser's agreement to return the empty printer cartridge. Some of its discount customers breach their agreements and sell used cartridges to "remanufacturers" that replenish the ink. In addition, some Lexmark cartridges sold outside the United States are