Page:Impression Products, Inc. v. Lexmark Int’l, Inc. Decision.pdf/18

Rh patentee’s rights. In sum, patent exhaustion is uniform and automatic. Once a patentee decides to sell—whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee pur- ports to impose, either directly or through a license.

Our conclusion that Lexmark exhausted its patent rights when it sold the domestic Return Program cartridges goes only halfway to resolving this case. Lexmark also sold toner cartridges abroad and sued Impression Products for patent infringement for “importing [Lexmark’s] invention into the United States.” 35 U. S. C. §154(a). Lexmark contends that it may sue for infringement with respect to all of the imported cartridges—not just those in the Return Program—because a foreign sale does not trigger patent exhaustion unless the patentee “expressly or implicitly transfer[s] or license[s]” its rights. Brief for Respondent 36–37. The Federal Circuit agreed, but we do not. An authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act.

This question about international exhaustion of intellectual property rights has also arisen in the context of copyright law. Under the “first sale doctrine,” which is codified at 17 U. S. C. §109(a), when a copyright owner sells a lawfully made copy of its work, it loses the power to restrict the purchaser’s freedom “to sell or otherwise dispose of. . . that copy.” In Kirtsaeng v. John Wiley & Sons, Inc., we held that this “ ‘first sale’ [rule] applies to copies of a copyrighted work lawfully made [and sold] abroad.” 568 U. S., at 525. We began with the text of §109(a), but it was not decisive: The language neither “restrict[s] the scope of [the] ‘first sale’ doctrine geographically,” nor clearly embraces international exhaustion. Id., at 528–