Claim Drafting Exhaustion: Potential Implications Of Claim Format

In the landmark case Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), the Supreme Court considered whether and to what extent the authorized sale of an unpatented component may exhaust patent rights covering a method performed by the component when integrated into a product.  The Court held that exhaustion may arise where the component includes all inventive aspects of the patented method and has no reasonable noninfringing use.  Id. at 638.  The Federal Circuit recently considered whether this two-part test—the so-called "substantial embodiment" test—applies in the situation where the product being sold is itself patented.  In Keurig, Inc. v. Sturm Foods, Inc., 732 F.3d 1370 (Fed. Cir. 2013), the Federal Circuit held that the substantial-embodiment test is inapplicable in that situation and exhaustion applies based on the authorized sale of the patented product.  The Federal Circuit's decision is relevant to practitioners when deciding what types