In late March 2013, the U.S. Supreme Court held that the so-called “first sale” doctrine authorizes the importation and resale in the United States of copies of a copyrighted work lawfully made and purchased abroad. See Kirtsaeng v. John Wiley & Sons 568 U.S. — (2013). The decision is contrary to the parallel rule in patent law which permits a patent owner to block the resale of a patented article initially sold abroad, and calls into question the continuing validity of the rule that only initial sales of a patented article within the United States exhaust a patent owner’s rights. See Jazz Photo Corp v. ITC, 264 F.3d 1094 (Fed. Cir. 2001).
Given this difference, many intellectual property practitioners were surprised when days after issuing the Kirtsaeng decision the Court declined to hear Ninestar Technology Co., Ltd. v. International Trade Com’n, 667 F.3d 1373 (Fed. Cir. 2012), a case addressing the very issue of “whether an initial authorized sale outside the United States of a patented item terminates all patent rights to that item.” Although the reasons for the Court’s decision not to hear the Ninestar case are unclear, what is certain is that the patent law remains as yet unchanged. We will continue to monitor new developments in the doctrine of international patent exhaustion.