The Role of Territoriality in Patent Exhaustion

Patent exhaustion is one of the most fundamental restrictions on patent rights.[i]  Under this doctrine, an authorized sale of a patented article moves it outside the scope of the U.S. patent monopoly.[ii]  With respect to the vended article, the patent right is extinguished and the patentee can no longer sue for infringement.

One question that remains unsettled, however, is the role of territoriality.  That is, where must the authorized sale take place?  For well over a century courts have struggled to answer whether extraterritorial sales qualify for purposes of patent exhaustion.[iii]

While the question was briefly settled in 2001 when the Federal Circuit adopted a national exhaustion standard—requiring that the authorized sale occur in the United States—little support exists for this territoriality requirement.[iv]  The lack of Supreme Court precedent has bred uncertainty and challenges.[v]

But guidance should soon be forthcoming.  The Supreme Court recently heard oral arguments in Kirtsaeng v. John Wiley & Sons concerning the related doctrine of international copyright exhaustion.  The decision in that case likely will have a significant influence on patent exhaustion.[vi]  Moreover, the issue of international patent exhaustion is squarely raised in a petition for certiorari in Ninestar Technology Co. Ltd. v. International Trade Commission.[vii]  Thus, with the Supreme Court poised to address the territoriality requirement, this article examines various Supreme Court patent exhaustion opinions and attempts to discern a possible Supreme Court standard.

Imperfect Precedent: Territorial Limitation Cases

While precedent is scarce, in the nineteenth century the Supreme Court decided a number of domestic exhaustion cases involving sales by assignees or licensees with limited geographic rights.  These territorial limitation cases provide useful, albeit imperfect, precedent for analyzing the role of territoriality.  One of the most influential exhaustion cases, Adams v. Burke, decided in 1873, illustrates the applicability of these cases to the current question.[viii]

In Adams, a patentee had assigned its rights for patented coffin lids to a first assignee in a limited geographic area around Boston and a second assignee outside that limited area. An undertaker purchased the patented lids from the first assignee in the assigned territory, but then transported the lids to the territory of the second assignee and used them in his business. The second assignee sued the undertaker arguing that the undertaker’s use in its territory constituted infringement.

The Supreme Court disagreed.  In siding with the undertaker, the Court held that once a party sells the patented article, it is no longer within the patent’s monopoly regardless of the territorial limitation placed on an assignee or licensee.[ix]  The Court gave primacy to a purchaser’s right to possess the article unencumbered from the patent monopoly.

The Supreme Court continued to apply this holding in subsequent territorial limitation cases in the 1890s.  For instance, in Hobbie v. Jennison, the patentee sued a territorial licensee for selling goods to a purchaser where the licensee knew the purchaser would use the goods outside of its territory.[x]  The patentee’s theory was that the licensee infringed the patent by knowingly selling goods to parties for use outside of its territorial license.  The patentee attempted to distinguish Adams by noting that Adams dealt not with the right to sell, but with a purchaser’s right to use the vended article.

The Supreme Court rejected this argument.  The Court agreed with the lower court that Adams held that “the sale of a patented article by an assignee within his territory carries the right to use it everywhere, notwithstanding the knowledge of both parties that a use outside of the territory is intended.”[xi]  Relying on Adams, the Supreme Court noted that the sale occurred within the licensee’s territory, and thus did not constitute infringement even if the licensee knew the article would be used outside its authorized territory.[xii]

The Supreme Court further extended the exhaustion doctrine in Keeler v. Standard Folding Bed in 1895.[xiii]  In Keeler, a party purchased patented articles from an authorized dealer in Michigan, and then resold those articles in Massachusetts, where a rival dealer had the exclusive right to sell under the patent.  Until this point, the law was unclear as to whether only the right to restrict the use of the vended article was exhausted by a sale.  Keeler clarified this point.  In Keeler, the Court concluded that “one who buys a patented article of manufacture from one authorized to sell them becomes possessed of an absolute property in such articles, unrestricted in time or place.”[xiv]  Thus, Keeler made clear that the authorized sale exhausts all rights with respect to the vended article, including the rights to use and sell the article.[xv]

Yet the Supreme Court noted “[t]he conclusion reached does not deprive a patentee of his just rights, because no article can be unfettered from the claim of his monopoly without paying its tribute.”[xvi]  Thus the Court treated the payment of the monopoly royalty as the prerequisite for exhaustion, while finding unqualified ownership is merely incidental to the sale.[xvii]  The Court stated that “[t]he inconvenience and annoyance to the public that an opposite conclusion would occasion are too obvious to require illustration.”[xviii]

The Reach of Boesch

While the above-cases are informative, Boesch v. Graff, decided in 1890, is often cited as the most relevant case regarding international exhaustion.[xix] But that is misleading.  In Boesch, the Supreme Court did not address international patent exhaustion.[xx]  Rather, it dealt with the question of whether a foreign sale by a party with prior user rights in that foreign country, and no patent rights, exhausted the U.S. patent right.[xxi]  Unremarkably, the answer is no.[xxii]

In Boesch, a single patentee owned patents in Germany and the United States covering lamp burners.  A party in the United States purchased lamp burners from a seller in Germany.  The seller in Germany, however, did not own or even have a license under either patent.  Instead, it possessed prior user rights, enabling it to sell the lamps in Germany without authorization from the patentee.  The Supreme Court held that the seller, because its rights were limited to Germany, could not authorize sales in the United States in defiance of the U.S. patent.[xxiii]

While Boesch is not strictly an exhaustion case, a tension still exists between that opinion and the domestic territorial limitation cases.  Adams and its progeny hold that a territorial assignee’s authorized sale exhausted rights beyond the boundaries of the authorized territory.  But Boesch arguably provides an exception to that rule.[xxiv]  At least on the international stage, Boesch holds that a sale, which is authorized in a specific territory, may not result in extraterritorial exhaustion.[xxv]

Nevertheless, one can harmonize the Supreme Court’s precedent.  While the domestic territorial limitation cases state that an authorized sale exhausts the patent rights even beyond the territory of the assignee, Boesch merely adds a qualifier.[xxvi]  That is, Boesch requires, by negative implication, that the authorization for the sale derive from the U.S. patentee, and not from an unrelated, foreign source.[xxvii]

The Supreme Court’s framing of the issue in Boesch supports this interpretation: “whether a dealer residing in the United States can purchase in another country articles patented there, from a person authorized to sell them, and import them to and sell them in the United States, without the license or consent of the owners of the United States patent.”[xxviii]  As framed, the dispositive issue is the lack of any license or consent of the U.S. patent owner.

This interpretation is further bolstered by the way in which Boesch was distinguished in Keeler.  There, the Supreme Court noted that, in Boesch, “neither the patentee or any assignee had ever received any royalty or given any license to use the patented article in any part of the United States.”[xxix]  Thus, Boesch can be seen to modify the holding of Adams to read: An authorized sale of an article by a party deriving authority from the U.S. patent owner exhausts all rights to the vended article under the U.S. patent.[xxx]

Conclusion: Qualified International Exhaustion

Therefore, despite the lack of clarity, a potential standard can be discerned. While Boesch and the Adams line of cases do not support unqualified international exhaustion, where any sale at any place would free the vended article from all U.S. patent rights, under a reasonable interpretation these cases suggest a qualified international exhaustion standard.  Under this standard, an authorized sale of an article that substantially embodies a U.S. patent by the U.S. patent holder or a party deriving authority from the U.S. patent holder exhausts the rights under that patent regardless of the locus of the sale.

Admittedly, the Supreme Court has never articulated this qualified international exhaustion standard, much less adopted it in any holding.  Instead, this doctrine relies on a global extension of domestic territorial limitation cases and dicta.  Thus, while this article proposes a possible standard, unfortunately, we will need to wait and see.  But it should not be long.


[i]  Adams v. Burke, 84 U.S. 453, 455 (1873) (noting with respect to patent exhaustion that “[t]he vast pecuniary results involved in such cases, as well as the public interest, admonish us to proceed with care, and to decide in each case no more than what is directly in issue.”).

[ii] Quanta Computer, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109, 2122 (2008) (“The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent law to control postsale use of the article.”)

[iii] See, e.g., Boesch v. Graff, 133 U.S. 697 (1890); Dickerson v. Tinling, 84 F. 192 (8th Cir. 1897); Daimler Mfg. Co. v. Conklin, 170 F. 70, 72 (2d Cir. 1909); Curtiss Aeroplane & Motor Corp. v. United Aircraft Engr. Corp., 266 F. 71 (2d Cir. 1920); Griffin v. Keystone Mushroom Farm, Inc., 453 F. Supp. 1283 (E.D. Pa. 1978);  STMicroelectronics, Inc. v. Sandisk Corp., No. 05-cv-45, 2007 U.S. Dist. LEXIS 21226, at *12 (E.D. Tex. 2007).

[iv] Jazz Photo Corp. v. Int’l Trade Comm’n, 264 F.3d 1094, 1105 (Fed. Cir. 2001) (citing Boesch, 133 U.S. at 701-03); see also Derek Dahlgren, Why Fujifilm Did Not End the Patent Exhaustion Debate, IP Law360 (October 29, 2010), available at (last visited September 27, 2012); Harold C. Wegner, International Patent Exhaustion: Whither the Supreme Court?, available at  (last visited December 6, 2012); STMicroelectronics, Inc., 2007 U.S. Dist. LEXIS  at *11-12 (Recommendation of Magistrate Judge) (“[T]he Court is left with only one question, does the patent exhaustion doctrine apply where United States patents are covered in a world-wide license even when the first sale occurs outside the United States? . . . The Jazz Photo case does not stand for the proposition that only sales within the United States can trigger the doctrine [of patent exhaustion] when there is a valid license covering the production . . . Therefore, Toshiba . . . had the right to sale [sic] any of the licensed products under the United States Patents . . . .”).

[v] Fujifilm Corp. v. Benun, 605 F.3d 1366 (Fed. Cir. 2010); Ninestar Tech. Co. v. Int’l Trade Comm’n, 667 F.3d 1373 (Fed. Cir. 2012); Cornell Univ. v. Hewlett-Packard Co., No. 01-1974, 2008 U.S. Dist. LEXIS 60209, at *2 (N.D.N.Y Aug. 1, 2008); LG Elecs., Inc. v. Hitachi, Ltd., No. 07-6511, 2009 U.S. Dist. LEXIS 20457, at *31 (N.D. Cal. Mar. 13, 2009).  See also Costco Wholesale Corp. v. Omega, S.A., 131 S. Ct. 565 (2010) (split decision).

[vi] There is a long history of applying doctrines from copyright law to patent law, and vice versa.  E.g., Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) and DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc).  However, unlike patent law, copyright law has codified, at least to an extent, the doctrine of exhaustion.  See 17 U.S.C. § 109(a).  This codification may represent a divergence between the two bodies of law and grounds for distinguishing any decision in Kirtsaeng.

[vii] Rather than taking the Ninestar case on the merits, this author believes it is more likely that the Supreme Court will grant the petition, vacate the Federal Circuit’s decision and remand the case for reconsideration in light of its decision in Kirtsaeng.

[viii] Adams v. Burke, 84 U.S. 453 (1973).

[ix] Id. at 456-57 (“Whatever, therefore, may be the rule when patentees subdivide territorially their patents, as to the exclusive right to make or to sell within a limited territory, we hold that in the class of machines or implements we have described, when they are once lawfully made and sold, there is no restriction on their use to be implied for benefit of the patentee or his assignees or licensees.”).

[x] Hobbie v. Jennison, 149 U.S. 355, 360 (1893).

[xi] Id. at 361.

[xii] Hobbie, 149 U.S. at 363 (“neither the actual use of the pipes in Connecticut, or a knowledge on the part of the defendant that they were intended to be used there, can make him liable.”).

[xiii] Keeler v. Standard Folding Bed Co., 157 U.S. 659 (1895)

[xiv] Id. at 666.

[xv] Id. at 666-67.

[xvi] Id. at 667.

[xvii] Id. at 664-65 (distinguishing Boesch on the grounds that the patentee had not received the royalty for its monopoly).

[xviii] Id. at 667.

[xix] See, e.g., Jazz Photo, 264 F.3d at 1105 (citing Boesch v. Graff, 133 U.S. 697, 701-03 (1890)).

[xx] Boesch, 133 U.S. at 703.  Patent exhaustion asks whether the sale by the patentee, or a party authorized by the patentee, exhausts the patent rights.  Boesch, on the other hand, asked whether a sale by a party authorized to sell a good, the authority deriving from a source other than the patent, exhausts patent rights.  Thus, the inquiry in Boesch is not about patent exhaustion.  However, of note, the appellants in Boesch may have tried to argue that some of the items were in fact purchased from the German patentee, from whom the complainants had obtained an assignment of a partial interest in the United States patent.  Id. at 702.  Yet, the record is not clear on this point.  So while the holding is clear, unfortunately the facts are not.  But in view of the issue as framed by the Supreme Court, Boesch does not appear to be a patent exhaustion case.  Id.

[xxi] Id. at 703.

[xxii] Id.

[xxiii] Id.

[xxiv] Adams, 84 U.S. at 456-57; cf. Boesch, 133 U.S. at 703.

[xxv] Boesch, 133 U.S. at 703.

[xxvi] Adams, 84 U.S. at 456-57; cf. Boesch, 133 U.S. at 703.

[xxvii] Boesch, 133 U.S. at 703 (“The sale of articles in the United States under a United States patent cannot be controlled by foreign laws.”).

[xxviii] Id. at  701.

[xxix] Keeler, 157 U.S. at 665.

[xxx] Adams, 84 U.S. at 456-57; cf. Boesch, 133 U.S. at 703.


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  • [Avatar for Anon]
    December 20, 2012 08:36 am

    The timing on this article is the only negative thought that crosses my mind. Between the crush of work and the other impending issues currently in play, this article is shortchanged of the discussion it deserves (and I include myself in that shortchanging and apologize accordingly).

    The article is thoughtfully written and deserves better.