The Aftermath Of Impression Products v. Lexmark

On May 30, 2017, the  U.S. Supreme Court issued its long-awaited patent exhaustion decision in Impression Products v.  Lexmark International, 137 S.Ct. 1523 (2017). In that opinion, the court held that any authorized sale by a patent owner exhausts all patent rights in the product sold, which prohibits a patent owner from enforcing post-sale restrictions through patent infringement suits. The court also held that exhaustion applies to foreign sales authorized by the patent owner. While the decision clarified the law of patent exhaustion, it also left many patent owners questioning whether any avenues remain to control downstream use and resale of patented products.

In Impression Products, the court identified some options that may be available to patent owners, such as reaffirming that contract law allows restricting a licensee's authority to use or sell a patented product. Similarly, the court indicated that contract law might provide a mechanism to enforce