Page:Impression Products, Inc. v. Lexmark Int’l, Inc. Decision.pdf/10

Rh

markets,” which does not occur when the patentee sells overseas, where the American patent offers no protection and therefore cannot bolster the price of the patentee’s goods. Id., at 760–761. As a result, Lexmark was free to exercise its patent rights to sue Impression Products for bringing the foreign-sold cartridges to market in the United States.

Judge Dyk, joined by Judge Hughes, dissented. In their view, selling the Return Program cartridges in the United States exhausted Lexmark’s patent rights in those items because any “authorized sale of a patented article. . . free[s] the article from any restrictions on use or sale based on the patent laws.” Id., at 775–776. As for the foreign cartridges, the dissenters would have held that a sale abroad also results in exhaustion, unless the seller “explicitly reserve[s] [its] United States patent rights” at the time of sale. Id., at 774, 788. Because Lexmark failed to make such an express reservation, its foreign sales exhausted its patent rights.

We granted certiorari to consider the Federal Circuit’s decisions with respect to both domestic and international exhaustion, 580 U. S. ___ (2016), and now reverse.

First up are the Return Program cartridges that Lexmark sold in the United States. We conclude that Lexmark exhausted its patent rights in these cartridges the moment it sold them. The single-use/no-resale restrictions in Lexmark’s contracts with customers may have been clear and enforceable under contract law, but they do not entitle Lexmark to retain patent rights in an item that it has elected to sell.

The Patent Act grants patentees the “right to exclude others from making, using, offering for sale, or selling [their] invention[s].” 35 U. S. C. §154(a). For over 160