Federal court sides with Banner & Witcoff client Lexmark over patent exhaustion for cartridges first sold outside U.S.

On March 27, the U.S. District Court for the Southern District of Ohio held that the Supreme Court’s recent decision in Kirtsaeng v. John Wiley & Sons, Inc., which addressed the “first sale” doctrine under copyright law, does not extend to the “first sale” doctrine under patent law as applied to patented articles first sold outside of the United States.

In doing so, the court concluded that the Federal Circuit’s decision in Jazz Photo Corporation v. International Trade Commission, which held that patent exhaustion does not apply to patented articles first sold outside of the United States, remains controlling precedent.

Lexmark is represented in this matter by Banner & Witcoff attorneys Timothy Meece, V. Bryan Medlock, Jason Shull and Audra Eidem Heinze.

For more information, click here to read an IP Law360 article titled, “Lexmark’s Sales Abroad Didn’t Exhaust Patents, Judge Rules.”