LES (U.S.A. and Canada), Inc. Files Amicus Brief in Impression Products, Inc. v. Lexmark Intl, Inc.

WASHINGTON, January 31, 2017 - On Tuesday, January 24, 2017, the Licensing Executives Society (USA & Canada), Inc. (LES), filed a brief at the U.S. Supreme Court as amicus curiae in Impression Products, Inc. v. Lexmark International, Inc., Case No. 15-1189. 

In Impression Products, the Supreme Court will consider specific aspects of the patent exhaustion doctrine. Specifically, the Court will consider whether the U.S. Court of Appeals for the Federal Circuit’s ruling in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001), i.e., that foreign sales of patented articles do not exhaust U.S. patent rights, was overruled by the Court’s decision in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013); and whether the Federal Circuit’s ruling in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), i.e., that lawfully restricted sales of a patented article do not exhaust patent rights, was overruled by Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008). 

The LES brief supported neither party, and did not advocate for a particular result. Instead, LES addressed the practical effect on licensing if the Court were to maintain the status quo, or if it were to overrule those holdings, thereby enlarging the scope of the exhaustion doctrine. If the Court were to affirm Jazz Photo and Mallinckrodt, it would preserve flexibility in license agreements, and the parties would maintain their ability to tailor agreements, e.g., to convey minimal rights, and thereby decrease the cost of those rights. If, however, the Court were to enlarge the exhaustion doctrine, it may result in agreements of greater simplicity, but also of greater cost, and thus a greater burden on prospective licensees. 

LES was represented on the brief by Daniel S. Stringfield and Katherine H. Johnson of Steptoe & Johnson LLP, Chicago, IL, and the brief was approved on behalf of LES by its President and Chair of the Board, Brian P. O’Shaughnessy of RatnerPrestia, Washington, DC. 

“LES is pleased to share its insights with the Supreme Court on the real-world effect of this case on licensing,” said O’Shaughnessy. “LES is the premiere professional society for those engaged in licensing in the USA and Canada. Collectively, our membership represents all aspects of the licensing process, in all sectors of the economy. As such, LES is especially well qualified to assist the Court in weighing these issues.” 

As a non-profit professional society representative of the entirety of the diverse community of executives, lawyers, and consultants engaged in intellectual property (IP) transactions, commercialization and valuation, LES and its members are devoted to bringing the fruits of innovation rapidly to market for the benefit of the global community. 

To read the full brief, click here.

For more information about LES, visit www.lesusacanada.org.

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About LES (USA & Canada), Inc.: Established in 1965, LES (USA & Canada), Inc. is a professional society of nearly 3,000 members engaged in the creation, commercial development, and orderly transfer of intellectual property.  LES members include business executives, lawyers, accountants, consultants, and scientists and engineers; and those members represent innovation-oriented enterprises of all sizes, professional services firms, universities, and government labs.  LES is a member society of the Licensing Executives Society International, Inc. (LESI), which has more than 10,000 members worldwide among 32 sister societies representing 90 countries.