Patent and Copyright First-Sale and International Exhaustion Standards to Remain in Conflict ... For

    On the heels of its March 19, 2013, decision in Kirtsaeng v. John Wiley & Sons, Inc., where the Supreme Court held that international exhaustion , i.e., an ex-U.S. first-sale rule applies to copyrights, the Court has surprisingly denied Ninestar Technology Co. Ltd.’s (“Ninestar”) petition for certiorari to consider whether international exhaustion applies to patents. 
    In our previous report on the Kirtsaeng decision, we discussed the key points of the Court’s holding. It would seem reasonable to assume that the application of the ex-US first-sale rule should apply similarly to both copyrights and patents. However, a key distinction is that the first-sale rule in copyright law has a statutory basis under the Copyright Act (17 U.S.C. §109), whereas the first-sale rule in patent law is grounded in common law. Interestingly, Justice Breyer, delivering the majority opinion in Kirtsaeng, wrote, “[t]he common law doctrine makes no geographical distinctions . . . .”     

    This appears to conflict with recent Federal Circuit holdings involving the first-sale rule in patent law, such as Jazz Photo Corp. v. Int’l Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001) and Fuji Photo Film Co. v Jazz Photo Corp., 394 F.3d 1368 (Fed. Cir. 2005).

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(IP Law Alert)