U.S. Supreme Court Cites Orrick Amicus in Major Patent Ruling


The U.S. Supreme Court cited an important amicus brief orchestrated by an Orrick appellate team in a closely-watched ruling involving the standard for exhaustion of patent rights.

In Impression Products, Inc. v. Lexmark International, the Supreme Court considered the circumstances under which a patent holder can bypass the exhaustion doctrine, such as by placing restrictions on how a buyer can use or resell a patented product. Lexmark, a leader maker of toner cartridges for laser printers, had mounted a patent infringement case against Impression Products, which purchases empty cartridges to resell on the market.

Led by Mark Davies, a partner in our Supreme Court and Appellate practice, an Orrick appellate team led an amicus effort in support of Impression Products on behalf of Intel, Dell and other technology companies. The brief urged the Supreme Court to protect innovators and consumers by preserving key elements of patent exhaustion. The position ultimately proved influential – Chief Justice John Roberts cited the Intel brief when the Supreme Court sided with Impression in the ruling, placing strict limits on how much control patent holders retain once their products are sold.

The New York Times, among others, cited the brief in media coverage of the decision.

In addition to Mark, the Orrick team included associates Elizabeth Moulton and Paul Meyer, and former associate Rachel Wainer Apter.