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LES (USA & Canada) Files Amicus Brief on Patent Exhaustion Doctrine

Monday, June 22, 2015  
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The Licensing Executives Society of USA and Canada (LES) Responds to Request to File Amicus Brief in Lexmark International, Inc. v. Impression Products, Inc.

MOUNT LAUREL, N.J. – June 22, 2015 — On Friday, June 19, the Licensing Executives Society (USA & Canada), Inc. (LES), filed a brief at the Federal Circuit as amicus curiae in Lexmark International, Inc. v. Impression Products, Inc., Case No. 14-1617.

In Lexmark, the Federal Circuit, sitting en banc, will consider specific aspects of the patent exhaustion doctrine, in particular, whether to retain the rule that foreign sales of patented articles do not exhaust U.S. patent rights, as it held in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001); and whether the rule of Mallinckrodt, Inc. v. Medi-part, Inc., 976 F.2d 700 (Fed. Cir. 1992), i.e., that lawfully restricted sales of a patented article do not exhaust patent rights, was overruled by Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)). 

The LES brief supported neither party, and did not advocate for a particular result.  Instead, LES addressed the practical effect on licensing if the Court were to maintain the status quo, or if it were to modify those holdings to enlarge the scope of the doctrine.  If the Court were to reaffirm Jazz Photo and Mallinckrodt, it would permit greater flexibility in license agreements, and the parties would be able to tailor agreements more carefully, e.g., to convey minimal rights, and thereby decrease the cost of those rights. If, however, the Court were to enlarge the doctrine, it may result in agreements of greater simplicity, but also of greater cost, and thus a greater burden on prospective licensees. 

LES was represented on the brief by Daniel Stringfield and Katherine Johnson of Steptoe & Johnson, Chicago, IL, and the brief was filed on behalf of LES by its Regional Vice President, USA, Brian P. O’Shaughnessy of RatnerPrestia, Washington, DC.

“LES is pleased to share its insights with the Federal Circuit on the real-world effect of this case on licensing,” said O’Shaughnessy. “LES is the premiere professional society for those engaged in licensing in the USA and Canada.  Collectively, our membership represents all aspects of the licensing process, in all sectors of the economy.  As such, LES in especially well qualified to assist the court in weighing these issues.”

As a non-profit professional society representative of the entirety of the diverse community of executives, lawyers, and consultants engaged in intellectual property (IP) transactions, commercialization and valuation, LES and its members are devoted to bringing the fruits of innovation rapidly to market for the benefit of the global community. The Society supports robust and effective IP protection in support of reliable and efficient transfers of IP rights, and the corresponding enlargement of markets and enhancements in economic activity.

Oral argument en banc is scheduled for October 2, 2015.

To learn more about LES, visit www.lesusacanada.org.

About LES (USA & Canada):
Established in 1965, the Licensing Executives Society (USA & Canada), Inc. (LES) is a professional society of nearly 3,000 members engaged in the transfer, use, development and marketing of intellectual property. The LES membership includes a wide range of professionals, including business executives, lawyers, licensing consultants, engineers, academicians, scientists and government officials. Many large corporations, professional firms, and universities comprise the Society's membership. Licensing Executives Society (U.S.A. & Canada), Inc. is a member society of the Licensing Executives Society International, Inc. (LESI), with a worldwide membership of more than 10,000 members in 32 national societies, representing over 90 countries. For more information on LES, visit www.lesusacanada.org.

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