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SCOTUS rules on patent exhaustion case

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The U.S. Supreme Court has limited the ability of companies to collect royalties after the first sale of a patented product. The case tackled an issue of patent exhaustion that hasn't been ruled on in 66 years.

In a unanimous opinion this morning in Quanta Computer, et al. v. LG Electronics, No. 06-937, the nation's highest court said that longstanding patent law precedent extends to method patents that are often part of high-technology components and products.

"For over 150 years this Court has applied the doctrine of patent exhaustion to limit the patent rights that survive the initial authorized sale of a patented item," Justice Clarence Thomas wrote in the 22-page opinion. "Because the exhaustion doctrine applies to method patents and because the license authorizes the sale of components that substantially embody the patents in suit, the sale exhausted all patents."

Justices reversed a decision by the Federal Circuit Court of Appeals, which came in a case focusing on whether South Korean company LG could sue to force the computer suppliers to pay royalties on components they legally purchased from Intel, even though Intel already paid royalties to LG in a technology licensing agreement.

One of those companies sued was Quanta, which argued that it didn't have to pay royalties to the original patent holder because of the patent exhaustion doctrine that only applied to the first sale.

In its ruling, the court rejected arguments that patents are never exhaustible. It relied on precedent that it described as supplying "solid footing" and focused heavily on the one last tackling this issue, U.S. v. Univis Lens Co., 316 U.S. 241 (1942) that involved patents for finished eyeglass lenses.

Indianapolis attorney Todd Vare with Barnes & Thornburg, who wasn't involved in this case but has watched it closely, urged other intellectual property lawyers to carefully review this opinion, whether they represent patent-holders, licensees or those offering patent indemnification.

"This could dramatically change patent licensing programs," he said, though he noted the ruling wasn't a surprise given the court's history in recent years of scaling back patent rights.
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  1. First comment on this thread is a fitting final comment on this thread, as that the MCBA never answered Duncan's fine question, and now even Eric Holder agrees that the MCBA was in material error as to the facts: "I don't get it" from Duncan December 1, 2014 5:10 PM "The Grand Jury met for 25 days and heard 70 hours of testimony according to this article and they made a decision that no crime occurred. On what basis does the MCBA conclude that their decision was "unjust"? What special knowledge or evidence does the MCBA have that the Grand Jury hearing this matter was unaware of? The system that we as lawyers are sworn to uphold made a decision that there was insufficient proof that officer committed a crime. How can any of us say we know better what was right than the jury that actually heard all of the the evidence in this case."

  2. wow is this a bunch of bs! i know the facts!

  3. MCBA .... time for a new release about your entire membership (or is it just the alter ego) being "saddened and disappointed" in the failure to lynch a police officer protecting himself in the line of duty. But this time against Eric Holder and the Federal Bureau of Investigation: "WASHINGTON — Justice Department lawyers will recommend that no civil rights charges be brought against the police officer who fatally shot an unarmed teenager in Ferguson, Mo., after an F.B.I. investigation found no evidence to support charges, law enforcement officials said Wednesday." http://www.nytimes.com/2015/01/22/us/justice-department-ferguson-civil-rights-darren-wilson.html?ref=us&_r=0

  4. Dr wail asfour lives 3 hours from the hospital,where if he gets an emergency at least he needs three hours,while even if he is on call he should be in a location where it gives him max 10 minutes to be beside the patient,they get paid double on their on call days ,where look how they handle it,so if the death of the patient occurs on weekend and these doctors still repeat same pattern such issue should be raised,they should be closer to the patient.on other hand if all the death occured on the absence of the Dr and the nurses handle it,the nurses should get trained how to function appearntly they not that good,if the Dr lives 3 hours far from the hospital on his call days he should sleep in the hospital

  5. It's a capital offense...one for you Latin scholars..

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