impression products lexmark international argued march decided may patent entitles patent holder exclude others making using offering sale selling invention throughout importing invention whoever engages one acts without authority patentee may face liability patent infringement patentee sells one products however patentee longer control item patent laws patent rights said exhaust respondent lexmark international designs manufactures sells toner cartridges consumers abroad owns number patents cover components cartridges manner used lexmark sells toner cartridges gives consumers two options one option buy toner cartridge full price restrictions option buy cartridge discount lexmark return program exchange lower price customers buy return program must sign contract agreeing use cartridge refrain transferring cartridge anyone lexmark companies known remanufacturers acquire empty lexmark toner cartridges including return program cartridges purchasers refill toner resell lexmark cartridges acquire purchasers overseas import lexmark sued number remanufacturers including petitioner impression products patent infringement respect two groups cartridges first group consists return program cartridges lexmark sold within lexmark argued expressly prohibited reuse resale cartridges impression products infringed lexmark patents refurbished resold second group consists toner cartridges lexmark sold abroad impression products imported country lexmark claimed never gave anyone authority import cartridges impression products infringed patent rights impression products moved dismiss grounds lexmark sales abroad exhausted patent rights cartridges impression products free refurbish resell import acquired overseas district granted motion dismiss domestic return program cartridges denied motion cartridges sold abroad federal circuit ruled lexmark respect groups cartridges beginning return program cartridges lexmark sold domestically federal circuit held patentee may sell item retain right enforce patent infringement lawsuits clearly communicated lawful restrictions use resale impression products knew lexmark restrictions restrictions violate laws lexmark sales exhaust patent rights sue impression products infringement cartridges lexmark sold abroad federal circuit held patentee sells product overseas exhaust patent rights item lexmark therefore free sue infringement impression products imported cartridges lexmark sold abroad judge dyk joined judge hughes dissented held lexmark exhausted patent rights return program cartridges sold patentee decision sell product exhausts patent rights item regardless restrictions patentee purports impose result even restrictions lexmark contracts customers clear enforceable contract law entitle lexmark retain patent rights item elected sell pp patent act grants patentees right exclude others making using offering sale selling invention years doctrine patent exhaustion imposed limit right exclude patentee sells item product longer within limits patent monopoly instead becomes private individual property purchaser bloomer mcquewan patentee negotiates contract restricting purchaser right use resell item may able enforce restriction matter contract law may patent infringement lawsuit exhaustion rule marks point patent rights yield common law principle restraints alienation patent act promotes innovation allowing inventors secure financial rewards inventions patentee sells item secured reward patent laws provide basis restraining use enjoyment product allowing restrictions run afoul common law refusal permit restraints alienation chattels kirtsaeng john wiley sons lord coke put century owner restricts resale use item selling restriction voide trade traffique bargaining contracting betweene man man coke institutes laws england congress enacted repeatedly revised patent act backdrop hostility toward restraints alienation reflected exhaustion doctrine accordingly long held even patentee sells item express otherwise lawful restriction patentee retain patent rights product see quanta computer lg electronics line precedent allows one answer case lexmark bring patent infringement suit impression products respect return program cartridges sold lexmark sold cartridges exhausted right control patent laws pp federal circuit reached different result started premise exhaustion doctrine interpretation patent infringement statute prohibits anyone using selling patented article without authority patentee according federal circuit exhaustion reflects default rule selling item presumptively grant purchaser use resell patentee withholds authority expressly limiting purchaser rights patentee may enforce restriction patent infringement lawsuits see problem federal circuit logic exhaustion doctrine presumption authority comes along sale limit scope patentee rights patent act gives patentees limited exclusionary power exhaustion extinguishes power purchaser right use sell import item rights come along ownership purchased authority engage practices patentee pp lexmark also sold toner cartridges abroad impression products acquired purchasers imported lexmark sue impression products infringement respect cartridges authorized sale outside one within exhausts rights patent act question international exhaustion intellectual property rights arisen context copyright law first sale doctrine copyright owner sells lawfully made copy work loses power restrict purchaser right sell otherwise dispose copy kirtsaeng john wiley sons held first sale doctrine applies copies works made sold abroad central decision fact first sale doctrine roots common law principle restraints alienation principle makes geographical distinctions text copyright act provide distinction straightforward application first sale doctrine required concluding applies overseas applying patent exhaustion foreign sales straightforward patent exhaustion roots antipathy toward restraints alienation nothing patent act shows congress intended confine principle domestic sales differentiating patent exhaustion copyright first sale doctrines also make little theoretical practical sense two share strong similarity identity purpose bauer cie many everyday products subject patent copyright protections lexmark contends foreign sale exhaust patent rights patent act limits patentee power exclude others making using selling importing products acts occur exclusionary powers apply abroad patentee may able sell products overseas price therefore sure receive reward guaranteed american patent laws without reward says lexmark exhaustion territorial limit patent rights basis distinguishing copyright protections extraterritorial effect either territorial limit support lexmark argument exhaustion distinct limit patent grant triggered patentee decision give patented item whatever fee decides appropriate patentee may able command amount products abroad patent act guarantee particular price instead patent act ensures patentee receives one reward whatever deems satisfactory compensation every item passes outside scope patent monopoly decision boesch gräff contrary decision lexmark contends exempt foreign sales patent exhaustion instead held sale abroad exhaust patentee rights patentee nothing transaction reaffirms basic premise patentee decide whether make sale exhausts patent rights item finally advocates views position foreign sale exhausts patent rights unless patentee expressly reserves rights rule based idea overseas buyers expect able use resell items freely exhaustion presumption time lower courts long allowed patentees expressly reserve rights option remain open patentees sparse inconsistent decisions government cites however provide basis expectation let alone settled one patentees reserve rights sell abroad theory behind rule also wrongly focuses expectations patentee purchaser sale stake comes patent exhaustion dealings parties addressed contracts instead exhaustion occurs allowing patent rights stick item travels market violate principle restraints alienation result restrictions location irrelevant patent exhaustion matters patentee decision make sale pp reversed remanded roberts delivered opinion kennedy thomas breyer alito sotomayor kagan joined ginsburg filed opinion concurring part dissenting part gorsuch took part consideration decision case opinion notice opinion subject formal revision publication preliminary print reports readers requested notify reporter decisions washington typographical formal errors order corrections may made preliminary print goes press impression products petitioner lexmark international writ certiorari appeals federal circuit may chief justice roberts delivered opinion patent entitles patent holder patentee period years exclude others making using offering sale selling invention throughout importing invention whoever engages one acts without authority patentee may face liability patent infringement patentee sells one products however patentee longer control item patent laws patent rights said exhaust purchaser subsequent owners free use resell product like item personal property without fear infringement lawsuit case presents two questions scope patent exhaustion doctrine first whether patentee sells item express restriction purchaser right reuse resell product may enforce restriction infringement lawsuit second whether patentee exhausts patent rights selling product outside american patent laws apply conclude patentee decision sell product exhausts patent rights item regardless restrictions patentee purports impose location sale underlying dispute case laser printers specifically cartridges contain powdery substance known toner laser printers use make image appear paper respondent lexmark international designs manufactures sells toner cartridges consumers around globe owns number patents cover components cartridges manner used toner cartridges run toner refilled used creates opportunity companies known remanufacturers acquire empty lexmark cartridges purchasers abroad refill toner resell lower price new ones lexmark puts shelves blind business problem lexmark structures sales way encourages customers return spent cartridges gives purchasers two options one buy toner cartridge full price strings attached buy cartridge roughly lexmark return program customer buys return program still owns cartridge exchange lower price signs contract agreeing use refrain transferring empty cartridge anyone lexmark enforce restriction lexmark installs microchip return program cartridge prevents reuse toner cartridge runs lexmark strategy spurred remanufacturers get creative many kept acquiring empty return program cartridges developed methods counteract effect microchips technological obstacle way little prevent using return program cartridges resale business lexmark contractual agreements initial customers downstream purchasers like remanufacturers lexmark however ready concede plan foiled sued number remanufacturers including petitioner impression products patent infringement respect two groups cartridges one group consists return program cartridges lexmark sold within lexmark argued expressly prohibited reuse resale cartridges remanufacturers infringed lexmark patents refurbished resold group consists toner cartridges lexmark sold abroad remanufacturers imported country lexmark claimed never gave anyone authority import cartridges remanufacturers ran afoul patent rights eventually lawsuit whittled one defendant impression products one defense lexmark sales abroad exhausted patent rights cartridges impression products free refurbish resell import acquired abroad impression products filed separate motions dismiss respect groups cartridges district granted motion domestic return program cartridges denied motion cartridges lexmark sold abroad parties appealed federal circuit considered appeals en banc ruled lexmark respect groups cartridges began return program cartridges lexmark sold relying decision mallinckrodt medipart federal circuit held patentee may sell item retain right enforce patent infringement lawsuits clearly communicated lawful restriction use resale exhaustion doctrine reasoned derives prohibition making using selling importing items without authority quoting purchase item presumptively also acquire authority use resell item freely presumption authority run item seller restricts use resale parties agreed impression products knew lexmark restrictions restrictions violate laws federal circuit concluded lexmark sales exhausted patent rights company sue infringement impression products refurbished resold return program cartridges cartridges lexmark sold abroad federal circuit looked precedent jazz photo international trade commission held patentee decision sell product abroad terminate ability bring infringement suit buyer import ed article sold rule concluded makes good sense exhaustion justified patentee receives reward available selling american markets occur patentee sells overseas american patent offers protection therefore bolster price patentee goods result lexmark free exercise patent rights sue impression products bringing cartridges market judge dyk joined judge hughes dissented view selling return program cartridges exhausted lexmark patent rights items authorized sale patented article free article restrictions use sale based patent laws foreign cartridges dissenters held sale abroad also results exhaustion unless seller explicitly reserve patent rights time sale lexmark failed make express reservation foreign sales exhausted patent rights granted certiorari consider federal circuit decisions respect domestic international exhaustion reverse ii first return program cartridges lexmark sold conclude lexmark exhausted patent rights cartridges moment sold restrictions lexmark contracts customers may clear enforceable contract law entitle lexmark retain patent rights item elected sell patent act grants patentees right exclude others making using offering sale selling invention years doctrine patent exhaustion imposed limit right exclude see bloomer mcquewan limit functions automatically patentee chooses sell item product longer within limits monopoly instead becomes private individual property purchaser rights benefits come along ownership patentee free set price negotiate contracts purchasers may virtue patent control use disposition product ownership passes purchaser univis lens emphasis added sale terminates patent rights item quanta computer lg electronics exhaustion rule marks point patent rights yield common law principle restraints alienation patent act promote progress science useful arts granting inventors limited monopoly allows secure financial rewards inventions univis patentee sells item enjoyed rights secured limited monopoly keeler standard folding bed purpose patent law fulfilled patentee received reward use invention law furnishes basis restraining use enjoyment thing sold univis explained context copyright law exhaustion impeccable historic pedigree tracing lineage back common law refusal permit restraints alienation chattels kirtsaeng john wiley sons lord coke put century owner restricts resale use item selling restriction voide trade traffique bargaining contracting betweene man man coke institutes laws england see gray restraints alienation ed condition conditional limitation alienation attached transfer entire interest personalty void attached fee simple land venerable principle federal circuit dismissively viewed merely one jurisdiction general judicial policy one time toward restrictions congress enacted repeatedly revised patent act backdrop hostility toward restraints alienation enmity reflected exhaustion doctrine patent laws include right restrain alienation initial sale conditions hateful law lord coke day obnoxious public interest straus victor talking machine inconvenience annoyance public opposite conclusion occasion obvious require illustration keeler illustration never hurts take shop restores sells used cars business works shop rest assured long bringing cars shop free repair resell vehicles smooth flow commerce sputter companies make thousands parts go vehicle keep patent rights first sale companies might instance restrict resale rights sue shop owner patent infringement even refrained imposing restrictions threat patent liability force shop invest efforts protect hidden lawsuits either way extending patent rights beyond first sale clog channels commerce little benefit extra control patentees retain advances technology along increasingly complex supply chains magnify problem see brief costco wholesale et al amici curiae brief intel et al amici curiae generic smartphone assembled various components practice estimated patents accordingly long held even patentee sells item express restriction patentee retain patent rights product boston store chicago american graphophone example manufacturer sold graphophones one earliest devices recording reproducing sounds retailers contracts requiring stores resell specific price manufacturer brought patent infringement suit retailer sold less concluded room controversy result selling item manufacturer placed beyond confines patent law qualifying restrictions use keep patent monopoly two decades later confronted similar arrangement univis lens co company made eyeglass lenses authorized agent sell products wholesalers retailers promised market lenses fixed prices government filed antitrust lawsuit company defended arrangement ground exercising authority patent act held initial sales relinquish ed patent monopoly respect article sold stipulation fixing resale prices derive support patent must stand footing restrictions unpatented goods true boston store univis involved resale price restrictions time decisions violated antitrust laws cases sale items rather illegality restrictions prevented patentees enforcing resale price agreements patent infringement suits lingering doubt patent exhaustion applies even sale subject express otherwise lawful restriction recent decision quanta computer lg electronics settled matter case technology company authorization patentee sold microprocessors contracts requiring purchasers use processors parts company manufactured one buyer disregarded restriction patentee sued infringement without much mentioning lawfulness contract held patentee bring infringement suit authorized sale took products outside scope patent monopoly turning case hand conclude line precedent allows one answer lexmark bring patent infringement suit impression products enforce provision accompanying return program cartridges sold return program cartridges passed outside patent monopoly whatever rights lexmark retained matter contracts purchasers patent law federal circuit reached different result largely got wrong foot exhaustion doctrine believed must understood interpretation infringement statute prohibits anyone using selling patented article without authority patentee quoting exhaustion reflects default rule patentee decision sell item presumptively grant purchaser use resell federal circuit explained patentee hand full bundle rights every time internal quotation marks omitted patentee expressly withholds stick bundle perhaps restricting purchaser resale rights buyer never acquires withheld authority patentee may continue enforce right exclude practice patent laws misstep logic exhaustion doctrine presumption authority comes along sale instead limit scope patentee rights general elec emphasis added right use sell import item exists independently patent act patent adds grants exclusively limited right prevent others engaging practices see crown die tool nye tool machine works exhaustion extinguishes exclusionary power see bloomer purchaser exercises rights created act congress derive title item virtue exclusive privilege granted patentee result sale transfers right use sell import rights come along ownership buyer free clear infringement lawsuit exclusionary right left enforce federal circuit also expressed concern preventing patentees reserving patent rights sell goods create artificial distinction sales sales licensees patentees explained often license others make sell products may place restrictions licenses computer developer instance license manufacturer make patented devices sell use individuals licensee breaches license selling computer commercial use patentee sue licensee infringement federal circuit view decision general talking pictures western elec aff established patentee grants license clearly stated restrictions activities purchase products licensee patentee also sue infringement purchasers knowingly violate restrictions patentees employ licenses impose restrictions purchasers enforceable infringement suits concluded make little sense prevent patentees sell directly consumers federal circuit concern misplaced patentee impose restrictions licensees license implicate concerns restraints alienation sale patent exhaustion reflects principle item passes commerce shaded legal cloud title moves marketplace license passing title product changing contours patentee monopoly patentee agrees exclude licensee making selling patented invention expanding club authorized producers sellers see general elec patentee exchanging rights goods free relinquish portion bundle patent protections patentee authority limit licensees federal circuit thought mean patentees use licenses impose restrictions purchasers enforceable patent laws long licensee complies license selling item patentee effect authorized sale licensee sale treated purposes patent exhaustion patentee made sale result sale exhausts patentee rights item see hobbie jennison license may require licensee impose restriction purchasers like license limiting computer manufacturer selling use individuals licensee perhaps customer sign contract promising use computers business sale nonetheless exhausts patent rights item sold see motion picture patents universal film mfg purchasers might comply restriction recourse licensee contract law patentee sold item restriction general talking pictures involved fundamentally different situation licensee knowingly de sales outside scope license emphasis added treated sale license whatsoever granted patentee meant patentee sue licensee purchaser knew breach infringement general talking pictures western elec mean patentees use licenses impose restraints purchasers quite contrary licensee infringed patentee rights comply terms license patentee bring patent suit purchaser purchaser participated licensee infringement general talking pictures stands modest principle patentee given authority licensee make sale sale exhaust patentee rights sum patent exhaustion uniform automatic patentee decides sell whether licensee sale exhausts patent rights regardless restrictions patentee purports impose either directly license iii conclusion lexmark exhausted patent rights sold domestic return program cartridges goes halfway resolving case lexmark also sold toner cartridges abroad sued impression products patent infringement importing lexmark invention lexmark contends may sue infringement respect imported cartridges return program foreign sale trigger patent exhaustion unless patentee expressly implicitly transfer license rights brief respondent federal circuit agreed authorized sale outside one within exhausts rights patent act question international exhaustion intellectual property rights also arisen context copyright law first sale doctrine codified copyright owner sells lawfully made copy work loses power restrict purchaser freedom sell otherwise dispose copy kirtsaeng john wiley sons held sale rule applies copies copyrighted work lawfully made sold abroad began text decisive language neither restrict scope sale doctrine geographically clearly embraces international exhaustion helped tip scales global exhaustion fact first sale doctrine originated common law refusal permit restraints alienation chattels doctrine makes geographical distinctions lack textual basis distinguishing domestic international sales meant straightforward application first sale doctrine required conclusion applies overseas internal quotation marks omitted applying patent exhaustion foreign sales straightforward patent exhaustion roots antipathy toward restraints alienation see supra nothing text history patent act shows congress intended confine borderless common law principle domestic sales fact congress altered patent exhaustion remains unwritten limit scope patentee monopoly see astoria fed sav loan assn solimino principle well established courts may take given congress legislated expectation principle apply except statutory purpose contrary evident internal quotation marks omitted differentiating patent exhaustion copyright first sale doctrines make little theoretical practical sense two share strong similarity identity purpose bauer cie many everyday products automobiles microwaves calculators mobile phones tablets personal computers subject patent copyright protections see kirtsaeng brief costco wholesale et al amici curiae historic kinship patent law copyright law sony america universal city studios bond two leaves room rift question international exhaustion lexmark sees matter differently patent act points limits patentee right exclude others making using selling importing products acts occur domestic sale argues triggers exhaustion sale compensates patentee surrendering rights brief respondent foreign sale different patent act give patentees exclusionary powers abroad without powers patentee selling foreign market may able sell product price therefore sure receive reward guaranteed patent law internal quotation marks omitted absent reward says lexmark exhaustion short patent exhaustion sales abroad patent rights abroad exhaust territorial limit patent rights however basis distinguishing copyright protections protections extraterritorial operation either nimmer nimmer copyright territorial limit support premise lexmark argument exhaustion separate limit patent grant depend patentee receiving undefined premium selling right access american market purchaser buys item patent rights exhaustion triggered patentee decision give item receive whatever fee decides appropriate article invention embodies univis patentee may able command amount products abroad patent act guarantee particular price much less price selling american consumers instead right exclude ensures patentee receives one reward whatever amount patentee deems satisfactory compensation keeler every item passes outside scope patent monopoly addressed international patent exhaustion one case boesch gräff decided years ago case illustrates sale abroad exhaust patentee rights patentee nothing transaction boesch days widespread adoption electrical lighting involved retailer purchased lamp burners manufacturer germany plans sell manufacturer authority make burners german law hitch two individuals ties german manufacturer held american patent invention patentees sued retailer infringement retailer imported lamp burners rejected argument german manufacturer sale exhausted american patentees rights german manufacturer permission sell american patentees american patentees exhausted patent rights products sold anyone purchasers german manufacturer thereby authorized sell articles decision lexmark contends exempt foreign sales patent exhaustion see brief respondent rather reaffirmed basic premise patentee decide whether make sale exhausts patent rights item american patentees respect german products german sales exhaust rights finally amicus advocates views position foreign sale authorized patentee exhausts patent rights unless rights expressly reserved brief position largely based policy rather principle government thinks overseas buyer legitimate expectation sale conveys seller interest patented article presumption foreign sale triggers exhaustion time lower courts long ago coalesced around rule patentee express reservation patent rights time foreign sale given effect option remain open patentee emphasis deleted government little long ago side two circuit courts cases involving company hold patentees may use express restrictions reserve patent rights connection foreign sales see dickerson tinling dickerson matheson coalesc ing ever took place following years smattering lower decisions mentioned rule foreign sales see sanofi veterinarian supp nj federal circuit adopted blanket rule foreign sales trigger exhaustion even patentee fails expressly reserve rights jazz photo sparse inconsistent decisions provide basis expectation let alone settled one patentees reserve patent rights sell abroad theory behind government rule also wrongly focuses likely expectations patentee purchaser sale exhaustion arise parties expectations sales transfer patent rights stake comes patents simply dealings parties addressed contract law instead exhaustion occurs sale patentee elects give title item exchange payment allowing patent rights stick item flows market violate principle restraints alienation exhaustion depend whether patentee receives premium selling type rights buyers expect receive result restrictions location irrelevant matters patentee decision make sale judgment appeals federal circuit reversed case remanded proceedings consistent opinion ordered justice gorsuch took part consideration decision case opinion ginsburg impression products petitioner lexmark international writ certiorari appeals federal circuit may justice ginsburg concurring part dissenting part concur holding regarding domestic exhaustion patentee sells product express restriction reuse resale may enforce restriction infringement lawsuit sale exhausts patent rights product sold see ante dissent however holding international exhaustion foreign sale hold exhaust inventor patent rights patent law territorial inventor receives patent patent provides protection abroad see deepsouth packing laitram patent system makes claim extraterritorial see also establishing liability acts patent infringement within import ation patented invention patentee must apply country seeks exclusive right sell invention microsoft oreign law alone law currently governs manufacture sale components patented inventions foreign see also convention brussels additional act modifying paris convention protection industrial property mar art stat patents applied different contracting shall independent patents obtained invention patent laws vary country country laws may embody different policy judgments relative rights inventors competitors public patented inventions microsoft internal quotation marks omitted sale abroad operates independently patent system makes little sense say sale exhausts inventor patent rights patent protection accompanies none patentee sales abroad competitor sell patented product abroad consequence accordingly foreign sale diminish protections law majority disagrees part decided kirtsaeng john wiley sons foreign sale exhausts copyright protections copyright patent exhaustion majority share strong similarity ante internal quotation marks omitted dissented decision kirtsaeng adhere view foreign sale exhaust copyright protections see even subscribed kirtsaeng reasoning respect copyright decision bear little weight patent context although may historical kinship patent law copyright law sony america universal city studios two identical twins id patent act contains analogue copyright act provision analyzed kirtsaeng see ante importantly copyright protections unlike patent protections harmonized across countries berne convention countries members agree treat authors member countries well treat golan holder citing berne convention protection literary artistic works revised stockholm july arts copyright protections one receives abroad thus likely similar received home even provided country separate copyright regime reasons affirm federal circuit judgment respect foreign exhaustion footnotes see treaties contracting parties berne convention last visited may