A Coherent View of Patent Exhaustion: A Standard Based on Patentable Distinctiveness
2004; Routledge; Volume: 20; Issue: 3 Linguagem: Inglês
ISSN
0882-3383
Autores Tópico(s)Legal Systems and Judicial Processes
ResumoABSTRACT Notwithstanding the increased frequency of assertion of the patent exhaustion defense in recent years, there is no clearly perceived standard for its application. The Supreme Court's 1942 Univis Lens decision, the controlling authority on patent exhaustion, mandated that the authorized disposition of an article embodying the essential features of a patent claim exhausts the patentee's exclusive right in that claim. Sixty-two years later, Univis Lens is still misinterpreted. However, a coherent reading of the essential features dictate of Univis Lens and subsequent caselaw compels the conclusion that, in the context of patent exhaustion, essential features are patentably distinctive features. This conclusion provides an analytical framework for determining whether the doctrine should apply in a given factual situation and also resolves the apparent conflicts between the patent exhaustion and related doctrines. TABLE OF CONTENTS I. Introduction II. Scope of the Patent Exhaustion Doctrine A. Supreme Court Precedent B. Decisions Following the Essential Features Dictate of Unvis Lens 1. Cyrix v. Intel 2. LGE Decisions 3. The Patent Exhaustion Doctrine Applies To Components Which Embody The Essential Features Of A Patented Combination III. Limitations on the Patent Exhaustion Doctrine A. The Patent Exhaustion Doctrine Does Not Negate a Lawful Express Restriction B. Sales Can be Restricted but Exhaustion Cannot be Disclaimed. C. Exhaustion Does Not Extend to Reconstruction of a Patented Entity IV. Double Royalties: The Sine Qua Non of Patent Exhaustion A. The Doctrine of Patent Exhaustion Does Not Preclude Collection of Separate Royalties for Practice of Separate and Distinct Patent Claims 1. Univis Lens Does Not Prohibit Separate Royalties For Separate And Distinct Patent Claims 2. Cyrix v. Intel Did Not Involve Separate And Distinct Component And Combination Claims 3. There Is No Authority For The Proposition That A Separate And Distinct System Or Combination Claim Is Exhausted By The Authorized Sale Of A Component B. Under Univis Lens, a Combination Claim is Exhausted by the Sale of a Component if the Component Embodies Essential Features of the Claimed Invention C. Precluding Recovery of Double Royalties Precludes the Applicability of the Patent Exhaustion Doctrine V. Essential Features are Patentably Distinctive Features VI. The Patent Exhaustion Doctrine Should Apply to a Method or Process Claim if the Article Sold Embodies the Essential Features of the Claim A. The Federal Circuit's Statements Regarding Inapplicability of the Exhaustion Doctrine to Method Claims were Unnecessary B. The Supreme Court Held Method Claims Exhausted in Univis Lens C. A Distinction Between Apparatus and Method Claims is Inconsistent with the Statutory Contributory Infringement Standard D. The District Court in LGE Followed the Statements of Bandag and Glass Equipment to Erroneously Conclude that Method Claims were not Exhausted E. The Repair/Reconstruction Doctrine is at Odds with the Federal Circuit's Statements in the Bandag and Glass Equipment Cases F. Writing a Claim in Method Format Does Not Create Patentable Distinctiveness VII. There is No Inherent Conflict Between the Implied License and Exhaustion Doctrines VIII. Conclusion I. INTRODUCTION The patent exhaustion doctrine, otherwise known as the first sale doctrine, has undergone a resurgence over the past decade as an affirmative defense in patent licensing and litigation. This resurgence has been driven by the interdependent development of the computer technology industry where, typically, numerous manufacturers are involved in the ultimate production or assembly of computer-based devices. …
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