On October 12, the U.S. Solicitor General submitted its friend-of-the-court brief in the case of Lexmark International v. Impression Products, and it urges the Court to consider both issues in the case.
First, there should be no “conditional sales” exception to patent exhaustion arising from a post-sale use restriction. Secondly, a foreign first sale presumptively exhausts US patent rights, unless the US patent owner expressly reserves those rights in the terms of the foreign sale.
The Court already has several IP cases on the docket this term, but the Solicitor General’s brief significantly increases the likelihood that the Court will grant certiorari and hear the case. The Supreme Court has routinely been overturning patent holders’ positions supported by the federal circuit. The Office of Solicitor General supervises and conducts government litigation in the US Supreme Court, and its opinion carries significant weight.
