Conditional Sale Doesn’t Trigger Patent Exhaustion
Client Alert | 1 min read | 07.10.06
In LG Electronics, Inc. v. Bizcom Electronics, Inc. et al. , (No. 05-1261, July 7, 2006), a Federal Circuit panel affirms in part, reverses in part and vacates in part a district court's summary judgment of non-infringement in favor of third-party installers who purchase microprocessors and chipsets from Intel Corporation, which is itself authorized to sell such products under an agreement with LG Electronics (“LGE”). Under this agreement, however, Intel is required to notify its customers that combining Intel products with non-Intel products is not permitted.
In reversing the district court's holding that the system claims of LGE's asserted patents were “exhausted” by Intel's sales, the panel reasons that requiring Intel to notify its customers that they were prohibited from infringing LGE's combination patents makes both the license and subsequent sales by Intel expressly conditional and, as such, does not trigger the patent exhaustion doctrine.
Insights
Client Alert | 2 min read | 11.14.25
Claim construction is a key stage of most patent litigations, where the court must decide the meaning of any disputed terms in the patent claims. Generally, claim terms are given their plain and ordinary meaning except under two circumstances: (1) when the patentee acts as its own lexicographer and sets out a definition for the term; and (2) when the patentee disavows the full scope of the term either in the specification or during prosecution. Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal Circuit’s recent decision in Aortic Innovations LLC v. Edwards Lifesciences Corp. highlights that patentees can act as their own lexicographers through consistent, interchangeable usage of terms across the specification, effectively defining terms by implication.
Client Alert | 6 min read | 11.14.25
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