No Exhaustion of Patent Rights for Conditional License or Method Claims
In LG Electronics, Inc. v. Bizcom Electronics, Inc., et al. (No. 05-1251, July 7, 2006), the Federal Circuit reiterated that the "first sale" exhaustion doctrine does not apply to a conditional license or a patentee's rights in its method claims. According to Circuiyt Judge Mayer,
The LGE-Intel license expressly disclaims granting a license allowing computer system manufacturers to combine Intel’s licensed parts with other non-Intel components. Moreover, this conditional agreement required Intel to notify its customers of the limited scope of the license, which it did. Although
Intel was free to sell its microprocessors and chipsets, those sales were
conditional, and Intel’s customers were expressly prohibited from infringing
LGE’s combination patents. Cf. N.Y. U.C.C. Law § 2-202 (allowing contracts to be
supplemented by consistent additional terms unless the writing is intended to be
complete and exclusive). The "exhaustion doctrine . . . does not apply to an
expressly conditional sale or license," B. Braun Med. Inc., 124 F.3d at 1426, so
LGE’s rights in asserting infringement of its system claims were not exhausted.
Conversely, the trial court declined to find LGE’s asserted method claims
exhausted. Several defendants contest this ruling on cross-appeal, and we reject
their challenge. Based on the above reasoning, even if the exhaustion doctrine
were applicable to method claims, it would not apply here because there was no
unconditional sale. However, the sale of a device does not exhaust a patentee’s
rights in its method claims. Glass Equip. Dev., Inc. v. Besten, Inc., 174 F.3d
1337, 1341 n.1 (Fed. Cir. 1999) (citing Bandag, Inc., 750 F.2d 903, 924 (Fed.
Cir. 1984)). The [lower] court was correct.