In The Journal of the Patent and Trademark Office Society: The Overruling of Mallinckrodt and The Future of Restraints on Alienation For Patented Goods

The article, "The Overruling of Mallinckrodt and The Future of Restraints on Alienation For Patented Goods," by James Kobak was published in The Journal of the Patent and Trademark Office Society.

The Supreme Court in its recent Lexmark decision ruled unanimously (with Justice Gorsuch not participating) that a patent owner could not enforce contractual restrictions on resale of patented products in domestic transactions through patent infringement suits because all patent rights were exhausted by the first sale. This decision, authored by Chief Justice Roberts, rejected the theory, articulated by the Federal Circuit in Mallinckrodt v. Medipart, Inc. more than twenty five years ago: that a patent owner could circumvent exhaustion by conditioning a grant of its patent rights in a sales agreement as a legitimate means of obtaining compensation for the value of its invention. The Supreme Court decisively rejected the logic and the treatment of earlier precedent used in the Mallinckrodt opinion along lines that I had criticized at the time and others have criticized since to little avail, until now, over a quarter century later.

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