June 19, 2017 - The article, "Antitrust And Misuse Considerations Following Lexmark," by James Kobak was published in Law360.
The U.S. Supreme Court in Lexmark held 8-0 (with Justice Neil Gorsuch not participating) that a patent owner’s restrictions on resale of patented products in domestic transactions could not be enforced through infringement suits because all patent rights were exhausted by the first sale. This decision, authored by Chief Justice John Roberts, rejected the theory, first articulated by the Federal Circuit in Mallinckrodt v. Medi Part Inc., 976 F. 2d 706 (Fed. Cir. 1992), that a patent owner could circumvent exhaustion by conditioning grant of its patent rights in a sales agreement as a legitimate means of obtaining compensation for the value of its invention.