The New York City Bar Association Patents Committee, chaired by Partner James R. Klaiber, a member of Pryor Cashman’s Intellectual Property Group, filed an Amicus Brief on June 19, 2015 in the U.S. Court of Appeals for the Federal Circuit’s case of Lexmark Int’l Inc. v. Impression Products Inc., in which the Court recently took the unusual step of ordering a sua sponte hearing en banc.

The principal issue in the case centers around whether the Court should overrule the holding in Jazz Photo Corp. v. International Trade Commission, 264 F.3d. 1096 (Fed. Cir. 2001), which announced the rule that a U.S. patentee’s authorized foreign sale of a product covered by the patentee’s U.S. patent, is not a “first sale” that exhausts the patentee’s right to bar a later importation of that patented product. The U.S. Supreme Court recently held, in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), that a U.S. copyright holder’s overseas sale of a copyrighted item bars the holder’s ability to prevent the parallel importation of that item.

The Amicus Brief urges the Court to abandon the Jazz Photo rule and instead adopt a holding similar to that in Kirtsaeng.  A patentee’s exclusive importation right was added to the patent statutes in 1994 as part of GATT, and the enabling legislation makes clear that no change to the then-current state of parallel importation law was effected by those amendments.  The brief explains that the holding in Jazz Photo was contrary to the weight of law that held that an authorized foreign sale of patented products exhausted the patentee’s right to bar later importation of those products. In addition, the brief examines how the one authority cited in Jazz Photo – the Supreme Court’s decision in Boesch v. Graff, 133 U.S. 697 (1890) - did not involve a foreign sale authorized by a patentee, and dicta from other Supreme Court cases suggests that the first sale doctrine as applied to patent law does not involve a geographic restriction on that first sale.

Klaiber, assisted by Tara Raghavan, a 2015 Pryor Cashman summer associate,  led the three-member team of the New York City Bar Association Patents Committee who prepared and drafted the brief. 

To read the brief, please click here.