Dorian Peters is our Latest Featured Speaker!

Our latest featured speaker is Dorian Peters!

Dorian will be speaking at our upcoming Criminal Law Certified Legal Specialist Exam Prep course in Oakland on August 8th and 9th. This will be Dorian’s first time speaking with us, and we’re looking forward to it!

Dorian A. Peters is an East Bay native, born and raised in Berkeley. He began his education at Diablo Valley College in Pleasant Hill, and then transferred to UC Berkeley, where he double majored in political science and mass communications. Go Bears! Through UC Berkeley, he was able to serve as a press and policy intern in Congresswoman Barbara Lee’s office in Washington, D.C.

Dorian then traveled to Nashville, Tennessee, to attend Vanderbilt Law School, where he participated in the moot court and mock trial programs. He had the opportunity to intern in the chambers of U.S. District Court Judge Kenneth Hoyt in Houston, Texas, and he also worked as a law clerk for the Metropolitan Nashville Public Defender’s Office, the U.S. Attorney’s Office in Nashville and the Contra Costa County District Attorney’s Office. Upon graduation, he became a prosecutor in the CCC District Attorney’s Office, where he tried about 35 cases to a jury and worked in several units.

One of the highlights of his career was a brief stint at the California Department of Corrections and Rehabilitation as part of the Employment Advocacy and Prosecution Team, where he investigated and litigated employee misconduct matters in front of the State Personnel Board. After that, he went into private practice, focusing mostly on criminal defense work.

He is active in many different parts of the Contra Costa County Bar Association. Currently, he serves as a committee member and a panelist on the Criminal Conflict Program, a volunteer fee arbitrator for both the CCCBA and the State Bar, and a CCCBA delegate to the California Conference of Bar Associations. Dorian participates in the Robert G. McGrath American Inn of Court and also served as a board member of the Barristers Section, where he assisted in the drafting of the current bylaws.

Outside of the CCCBA, he is a member of the Leadership Council for the nonprofit Center for Youth Development through Law, a pipeline program focused on exposing under-privileged youth to the legal system, and encouraging them to attend college and pursue careers as attorneys.

Edgar Saenz is our Latest Featured Speaker!

Our latest featured speaker is Edgar Saenz!

Edgar will be speaking at our upcoming Estate Planning, Trust and Probate Law Certified Legal Specialist Exam Prep course in Los Angeles on September 19th and 20th. He has spoken for us several times, including at this year’s Trusts and Estates 101 course. Welcome back, Edgar!

Edgar Saenz is a California Certified Specialist in Estate Planning, Trust & Probate Law practicing in Westchester, Los Angeles. He is a graduate of Stanford Law School (JD ’86) and St. Mary’s University (BA ’83, magna cum laude).

He serves on numerous community and professional boards, including past president of the Westchester Rotary Club (2013-2014) and board member of the LAX Area Chamber of Commerce. Edgar is rated AV by Martindale Hubbell.

Edgar has performed pro bono legal services for the Los Angeles Center for Law and Justice and other nonprofits, and has been a judge pro tem with the Los Angeles County Superior Court.

It’s Complicated, Part 1: Amgen v. Sandoz

Adrienne Naumann recently spoke for our United States Federal Intellectual Property Developments 2018-2019 Webinar, offering her expertise on the Federal Defend Trade Secrets Act and recent relevant cases. She established her own practice in 1996, exclusively focusing on intellectual property law. We’re so glad to be able to share her article here!

In Amgen, Inc. v. Sandoz, Inc., 137 S. Ct. 1664 (2017) the U.S. Supreme Court [hereinafter the Court] held that an applicant need not disclose certain technical information to another company under the federal abbreviated drug approval process. See 42 U.SC. sections 262(k) and 262(l). The Court also held that an injunction is not available to enforce compliance with this specific federal disclosure requirement. Under this abbreviated process an applicant may obtain a license for commercial marketing of its pharmaceutical product, if its pharmaceutical is (i) derived from living organisms and (ii) sufficiently similar to a licensed pharmaceutical that had undergone the traditional approval process. The traditional process requires numerous clinical tests and other technical data by a ‘sponsor,’ so there is a strong incentive for an applicant to ‘piggyback’ on the sponsor’s submissions under the abbreviated process. Also during the abbreviated process, the two companies may determine whether the sponsor’s patents would be infringed prior to the applicant’s pharmaceutical’s manufactured and sales. The statute expressly provides a remedy of an immediate declaratory judgment to the sponsor if the applicant does not disclose its FDA licensing application and manufacturing information to the sponsor.

In the instant case, Amgen was the sponsor with a traditionally licensed protein to stimulate white blood cell production. Sandoz submitted an abbreviated approval application for a biosimilar product, but it refused to disclose its application or manufacturing information to Amgen. Thereafter Amgen filed a lawsuit against Sandoz for patent infringement, conversion and unfair competition, but the trial court dismissed these counts. The U.S. Court of Appeals for the Federal Circuit [hereinafter the Federal Circuit] affirmed and held that Sandoz need not disclose the licensing application or manufacturing information to Amgen. It also held that there was no injunction available for compliance with this particular disclosure.

Before the Court, Amgen contended in part that the term “shall” of the statute conclusively demonstrates that disclosure of a licensing application and manufacturing information is mandatory. Amgen also contended that merely because the statute did not expressly include an injunction as a remedy did not preclude its use. However, Sandoz contended that non-disclosure was simply a conditional precedent that results in forfeiture of litigation rights to the sponsor. Sandoz further stated that injunctions were not explicitly included as a remedy for this non-disclosure, whereas in other statutory provisions an injunction was included as a remedy. The Court agreed with Sandoz on both these points. However, it also concluded that although an injunction was not an option under the federal statute, it may be a remedy under the state law count of unfair competition. The Court then remanded the case to the Federal Circuit to determine whether Sandoz’s non-disclosure constitutes unfair competition under state law, and it so whether an injunction was possible.


[1] Another issue before the Court was whether the applicant may provide the notice of initial commercial marketing to the sponsor prior to FDA licensing. The Court reversed the Federal Circuit which had previously held that notice must be provided only after the applicant actually receives its license. Instead the Court squarely held that notice may be provided either before or after actual receipt of the license.

Susan Han is our Latest Featured Speaker!

Our latest featured speaker is Susan Han from Han Law Group!

Susan will be speaking at our upcoming Immigration Law Certified Legal Specialist Exam Prep course in Los Angeles on September 12th and 13th. She has spoken for us several times, including at our Visa Processing seminar in 2017. We’re glad to have you with us again, Susan!

Ms. Han has extensive experience in Immigration Law and Criminal Law, and is a Certified Legal Specialist in Immigration & Nationality Law. Ms. Han has been practicing immigration law since 1998 and has successfully represented hundreds of clients before the U.S. Citizenship and Immigration Services (USCIS – formerly INS), the Immigration Court and the Appeals Board and Courts. She has vast experience in handling all aspects of immigration law including family-based petitions, business immigration, deportation and removal, asylum, citizenship and naturalization, and appeals at all levels. Ms. Han received her Bachelor of Arts degree in English Literature and Creative Writing from the University of California, Santa Barbara. She graduated with a Juris Doctor degree from Southwestern University School of Law where she earned the American Jurisprudence Award in Constitutional Law. In addition to her practice, Ms. Han had been an adjunct professor at California State University, Los Angeles, where she taught Immigration Law for the Paralegal Program.

Michael Colantuono is our Latest Featured Speaker!

Our latest featured speaker is Michael Colantuono from Colantuono, Highsmith & Whatley!

Michael will be speaking at our upcoming Appellate Law Certified Legal Specialist Exam Prep course in Los Angeles on September 12th and 13th. He also received rave reviews at our 2017 Appellate Law Certified Legal Specialist Exam Prep course, as well as at two of our Annual Advanced Appellate seminars. We’re glad to have you with us again, Michael!

Michael has specialized in municipal law since 1989. He is certified by the California State Bar’s board of Legal Specialization as a Specialist in Appellate Law and is also Secretary/Treasurer of the California Academy of Appellate Lawyers, an association of fewer than 100 of the most distinguished appellate lawyers in California. He has argued 8 cases in the California Supreme Court and appeared in all six of the California District Courts of Appeal, as well as trial courts around the State.

Michael has expertise in a broad range of areas of concern to local governments in California, including constitutional law, land use regulation, open meetings, elections, municipal litigation, conflicts of interest, public utilities, LAFCO issues, inverse condemnation, cannabis regulation, and a wide range of public finance issues involving taxes, assessments, fees and charges.

Michael is perhaps California’s leading expert on the law of local government revenues, briefing 18 cases on that subject in the California Supreme Court since 2004. California Chief Justice Ronald M. George presented him with the 2010 Public Lawyer of the Year Award on behalf of the California State Bar. Two successive Speakers of the California Assembly appointed him to the Board of Trustees of the California Bar, the state agency which regulates the practice of law in California. His fellow Trustees elected him Treasurer and President of the Bar and the California Supreme Court appointed him as Chair of the Board of Trustees.

Michael currently serves as City Attorney for the City of Grass Valley and General Counsel for the Grass Valley Redevelopment Agency Successor Agency, the Calaveras County LAFCO, the Oak Tree Park and Recreation District, the Higgins, Ophir Hill, Penn Valley, and Rough & Ready Fire Districts and the Camarillo Healthcare District. He previously served as City Attorney of Auburn (2005–2019), Barstow (1997–2004), Calabasas (2003–2012), Cudahy (1994–1999), La Habra Heights (1994–2004), Monrovia (1999–2002), and Sierra Madre (2004–2006), as General Counsel to the Auburn (2005–2019), Barstow (1997–2004) and Sierra Madre (2004–2006) Redevelopment Agencies, and as General Counsel of the Big Bear City Community Services District (1994–2001).

As perhaps the foremost expert on Propositions 218 and 26, Michael assisted the Legislative Analyst’s Office in the impartial analysis of the earlier measure and co-chaired the committee which drafted what became the Proposition 218 Omnibus Implementation Act of 1997. He also chaired the committees which drafted the League of California Cities’ Prop. 26 and 218 Implementation Guide.

Michael was elected by his peers to serve as President of the City Attorneys’ Department of the League of California Cities in 2003–2004.

Michael was appointed by the Rules Committee of the California State Assembly to the Commission on Local Governance in the 21st Century. The Commission was formed to study the Cortese-Knox-Hertzberg Local Government Reorganization Act and the bulk of its recommendations became law. Michael was deeply involved in drafting both the committee report and the statute.

Michael graduated magna cum laude from Harvard University (BA 1983) and received his law degree from University of California, Berkeley School of Law (JD 1988), graduating first in his class. While in law school, he was an Articles Editor of the California Law Review and became a member of the Order of the Coif upon graduation. Michael was law clerk to the Honorable James R. Browning, Judge of the United States Court of Appeals for the Ninth Circuit, in 1988–1989.

He taught Administrative Law as an adjunct Professor of Law at the University of California, Berkeley School of Law in 1995 and is a frequent speaker and trainer on a wide range of public law topics.

Michael comments on local government and municipal finance topics on Twitter (@MColantuono) and LinkedIn (Michael Colantuono).

Daniel Smith is our Latest Featured Speaker!

Our latest featured speaker is Daniel Smith from Dellecker, Wilson, King, McKenna, Ruffier, & Sos!

Dan will be speaking at our upcoming 8th Annual Circuit Court Boot Camp seminar in Orlando on June 7th. This will be his first presentation with us, and we’re looking forward to it!

Dan earned his law degree from the University of Florida in 2005 with high honors and his undergraduate degree from the University of Central Florida in 2002 with highest honors. He is a member of the Orange County Bar Association, Florida Justice Association, Central Florida Trial Lawyers Association, and the Florida Bar.

He is admitted into all courts in the State of Florida, the U.S. District Court in the Middle District of Florida, U.S. District Court in the Northern District of Florida, U.S. District Court in the Southern District of Florida, the Eleventh Circuit in the United States Court of Appeals, and the United States Tax Court. Daniel has received multiple distinctions as an Avvo Top Attorney and Avvo Client’s Choice Award in 2016.

Dan values his time with his family and is supportive of the role dads can play in their children’s lives. In 2017, he co-founded the recurring event series Dan’s Donuts with Dad. Knowing the importance of family, Daniel is involved with Family Promise, St. Michael’s Preschool, Edgewater High School Wrestling, and is the coach of Ocoee High School Wrestling. He is also a guardian ad litem for at-risk children.

Oral Argument: A Purposeful Conversation

Honey Kessler Amado recently shared her expertise with us in our How to Write a Better Appellate Brief webinar. She also teamed up with her fellow Advanced Appellate Conference speakers Benjamin Shatz and Robin Meadow to write this article, and we’re happy to present it here!

Justice Stephen Breyer of the United States Supreme Court has described oral argument as a conversation. Its purpose is to help the court decide the case. You help the court by having a well-developed argument and by answering the court’s questions.

Although oral argument is usually optional, given its purpose it should not be waived. This is counsel’s only chance to discuss the case with the justices who will decide it. (Appellate judicial officers are called justices in the state court of appeal and judges in the federal court of appeals. This article will refer to all judges on the appellate level – state and federal – as justices.) Further, because appellate courts rarely provide tentative opinions before oral argument, counsel rarely knows whether the court has questions about the case or has made a factual or legal error in its analysis. Waiving oral argument means losing a critical opportunity to affect the decision. Indeed, several appellate justices have commented that they are surprised when counsel waives argument; it suggests that counsel is not interested in engaging with the court.

Preparing for Oral Argument

The key to effective oral argument and confident delivery is preparation. As one colleague says, “Become master of the record and the law.” Begin with reviewing your record summaries, and go back into the record itself to confirm critical factual points. Then read all the briefs. If a brief contains a factual statement that you do not recall from your review of the record, go back to the record to be certain the statements are correct or appropriately complete or contextualized.

As you review the record and briefs, begin reviewing the law. Re-read the statutes and leading cases on which you and your opposition rely. As time has passed between briefing and preparing for oral argument, a re-reading of the key cases is warranted; and the fresh reading may bring different insights about them. Research whether there have been any changes to the controlling statutes or any new decisions that may affect the case. If there are a number of relevant or key cases, you may find it helpful to create a chart or other summary of the cases – including citation, key facts, and holding – for easy reference during argument.

If there is a new, significant case on point to your factual or legal issues, bring that case to the court’s attention. (See California Rules of Court (“C.R.C.”), Rule 8.254, for the procedures 2 for doing so.) If your preparation reveals a critical case that you did not discuss in your brief or that is necessary to respond to appellant’s reply brief, send a letter to the court, copied to opposing counsel, stating that you will refer to the case at oral argument.

When preparing, think anew about the case. Consider the strengths of your opposition: what is his or her best argument? Consider the weaknesses of your case: where is it vulnerable? Consider whether there are policy issues that you should address or that the court may raise. Anticipate the questions of the court. And ask yourself whether you can succinctly say where the trial court erred and why — or why its decision was correct – under the governing standard of review and controlling law.

Corral your thoughts into organized notes. The notes should address all of the points that you want to make. (Your argument should be focused on a few main points, not necessarily on every issue raised in your brief. But be prepared to answer questions on any points raised in your brief.) The notes should include a carefully prepared opening that summarizes your position, capturing the justice and reason of your side of the case.

Organize all your materials for oral argument into a notebook. The notebook – which for preparation purposes can be physical or digital (for example, using Microsoft’s OneNote) – should include your argument notes, copies of relevant statutes, summaries or copies of relevant cases, your chart of cases, a time-line of critical events, a list of essential facts, and key documents from the record which you may need to reference during argument. Whether you take the notebook to the lectern is a matter of personal style. Some lawyers prefer having just a page of notes, and some take no notes at all to the lectern.

The final step of preparation is practice. Say your argument aloud. Stand in your office or in front of a mirror, with your notebook, and give your argument to nobody in particular! How does it sound to your ear? Does hearing it expose weaknesses, inconsistencies, flawed logic, or awkward transitions? Does it evoke questions? Work on these questions or weaknesses. After this polishing, practice it again. And again. become so familiar with the arguments – familiar, not memorized – that you can easily access parts of the argument when answering the court’s questions.

When you can assemble a moot court, do so. But do not be discouraged if moot court is not available. You can still practice, polish, practice, and practice again (“the Four P’s”)!

Presenting the Argument

In the California state-appellate courts, each party is generally allowed to designate how much time it wants for argument, up to a maximum of 30 minutes. (The calendar notice will probably disclose any different practice.) In the federal appellate courts, oral argument is mandated except in the most limited of circumstances, but the court will decide how much time is allocated to each side, also up to 30 minutes each side. (For state-court appeals, see C.R.C., Rule 8.256 and local District rules; for federal-court appeals, see Federal Rules of Appellate Procedure, Rule 34 and Circuit Rule 34.)

Do not give a prepared speech. Oral argument is not a closing argument, and an impassioned speech will not persuade – or even impress – the court. The conversation is the persuasion.

Your notes and outline are your guide for the conversation, not your script. If you have a “cold bench” that does not ask any questions, your notes will be the logical sequence of your argument. If you have a “hot bench” that interrupts with questions, depart from your sequence but use the information in your notes to answer the questions. Questions are your friends. Questions allow you to focus on what interests the court. They provide insights into what concerns the court and can reveal a critical misunderstanding of the facts.

Listen to the questions. Ask the court to repeat a question if you are not sure of it (or, as happens, cannot hear it). If necessary, take a moment to think about the question. A justice may not be arguing or rejecting your point; he or she may simply be seeking help on how to write up a point. Sometimes a justice poses a question in an effort to resolve a debate among the justices or lobs a “softball” designed to underscore a point to another member of the panel.

Answer the questions, and answer them immediately. This is imperative – never just say that you will return to the point. If the court has a question, that is all that interests the court at that moment. If you are asked a “yes” or “no” question, answer with a direct “yes” or “no” and then explain your answer. If the court asks a hypothetical, answer it. Sometimes the court is exploring concepts through hypotheticals. After answering, if necessary, distinguish the hypothetical from your case or bring the court back to your facts. Concede weak points; it preserves your credibility. But explain why that weak point is not controlling or fatal. If you are uncertain of an answer, state that. Where appropriate, explain why you are uncertain. If the point is critical, ask for an opportunity to submit a short letter brief on the question. If the court thinks the answer is critical, it will probably give you that opportunity.

Listen to your opponent’s argument. What has the court asked counsel? Do the questions reveal that the justices – or some of the justices – agree with you? Where is the court struggling? As respondent, start with these points. Clarify a point that your opposition could not; clarify any misunderstanding or misstatements about the record. Help resolve the court’s struggle. If the questions indicate that the court is sympathetic to your argument, reinforce the point by citing to the record or relevant authorities to assure the court that its sympathies are well-founded.

Know when to sit down. If it is clear that the court has fully accepted your argument, as reflected in the questions to your opponent, you should offer to submit on that issue “unless the court has any questions.”

When the court has completed asking its questions and you have covered all your points, argument is finished. Try to end on a strong note, ideally with a prepared closing that summarizes why you should win or what relief you want (e.g., a full reversal, or reversal and remand on particular issues). Some counsel end with the prepared closing alone; others will then ask if there are any further questions as a final deference to the court. The final courtesy is to thank the court for its attention.

It is often said that we give three arguments – one we prepare to give, one we actually give, and one we give on the way home. The one on the way home is always the best. But when well prepared, the one we actually give can be very satisfying, whatever the outcome.

Joshua Spector is our Latest Featured Speaker!

Our latest featured speaker is Joshua Spector from Allen, Dyer, Doppelt, & Gilchrist!

Joshua Spector will be speaking at our upcoming 8th Annual Circuit Court Boot Camp seminar in Fort Lauderdale on June 6th. This is his first time speaking with us, and we’re so glad to have him!

A board certified business litigator, Joshua Spector has advocated for clients in disputes ranging into tens of millions of dollars in controversy. As lead counsel, Mr. Spector has tried jury trials in both state and federal courts, and represented clients in federal appeals and appeals in Florida’s district courts and the Florida Supreme Court. Mr. Spector has represented a foreign head of state, Grammy-nominated artists, record labels, models, artist managers, songwriters, and film production companies, in addition to numerous related businesses, officers, and directors.

Core specialties in Mr. Spector’s practice include complex business litigation and related arbitrations, trade dress infringement, cybersquatting and domain name disputes, all ambits of trademark infringement under the Lanham Act, state common law unfair competition, defamation and trade libel, commercial litigation, appeals, non-competition agreements (non-competes), trade secrets (both under the Florida Trade Secret Act and the new DTSA), intra-company management disputes, dissolution, receiverships, and shareholder derivative claims. Mr. Spector has also qualified as an Arbitrator for the American Arbitration Association and is available to act as a private arbitrator by agreement of the parties.

Among several publications, Mr. Spector is the co-author of the definitive book on Florida defense practice, “Florida Affirmative Defenses and Procedural Objections” (ALM 5th ed.). Mr. Spector has lectured and instructed attorneys on subjects including affirmative defenses and defensive motion practice, Florida’s Deceptive and Unfair Trade Practice Act, and piercing the corporate veil. Appointed by the Florida Supreme Court in 2011, Mr. Spector serves the Court’s committee on standard jury instructions for business and contract cases where he led the drafting, among other instructions, on the standard instruction for misappropriation of trade secrets.

Luis Gonzalez is our Latest Featured Speaker!

Our latest featured speaker is Luis Gonzalez from Holland & Knight!

Luis will be speaking at our upcoming 8th Annual Circuit Court Boot Camp seminar in Orlando on June 7th. He also spoke at our 6th Annual Circuit Court Boot Camp, and we’re so glad to have him back!

Luis Gonzalez is an employment and liquor license attorney in Holland & Knight’s Orlando office. From providing representation in employment matters and contract disputes to advising how to obtain a distributor or restaurant liquor license, Mr. Gonzalez offers clients an in-depth understanding of a broad subject matter.

Mr. Gonzalez helps clients enforce noncompetition and nonsolicitation agreements, protect trade secrets, conduct internal investigations and resolve contract disputes and business torts. In addition, he represents employers in litigation involving a broad range of employment-related matters, including claims of discrimination, wage and hour violations, the Family and Medical Leave Act (FMLA), whistleblower/retaliation and sexual harassment. He represents clients before federal and state courts and in arbitration. He has experience with collective actions under the Fair Labor Standards Act (FLSA) and class action claims under the Fair Credit Reporting Act (FCRA). Mr. Gonzalez counsels companies on handling high-risk employee terminations and layoffs to avoid litigation.

Mr. Gonzalez counsels all segments of the alcohol industry – including craft breweries, suppliers, wholesale distributors, restaurants, hotels, bars, nonprofits and clubs – in liquor licenses, tax, promotions, marketing and administrative enforcement actions. He guides clients through concession, catering and food and beverage agreements, among other related agreements. Additionally, he assists with mergers and acquisitions involving the transfer or acquisition of liquor licenses.

Previously, Mr. Gonzalez was in law enforcement as a uniformed and undercover investigator, SWAT team member and K-9 handler. He also served as a special agent and special agent supervisor with the Florida Division of Alcoholic Beverages and Tobacco. This unique background offers clients a valuable perspective in investigating and defending employee claims and in navigating the heavily regulated alcohol beverage industry.

Mr. Gonzalez dedicates a portion of his time to pro bono matters, including representing families seeking guardianship of elderly parents and disabled adults. He is a member of the Orlando Diversity Committee, whose purpose is to promote, celebrate, support and encourage diversity within the office and business community.

When a Sale is an Authorized Sale: Impression Products v. Lexmark International

Adrienne Naumann recently spoke for our United States Federal Intellectual Property Developments 2018-2019 Webinar, offering her expertise on the Federal Defend Trade Secrets Act and recent relevant cases. She established her own practice in 1996, exclusively focusing on intellectual property law. We’re so glad to be able to share her article here!

In Impression Products, Inc. v. Lexmark International, Inc., 137 S. Ct. 1523 (2017) [hereinafter ‘Impression Products’ and ‘Lexmark’] the United States Supreme Court [hereinafter ‘the Court’] held that a patent owner’s voluntary transfer of a U.S. patented item for value is the only requirement for an authorized sale of that item. The Court also held that a purchaser’s non-compliance with post sale restrictions does not result in this sale becoming unauthorized. Authorization is critical, because without it the patent owner retains patent rights in the item and a purchaser’s activity may result in patent infringement. In contrast, with an authorized sale a consumer receives a product of a patented technology free and clear of these patent rights.

Lexmark sold its U.S. patented toner cartridges to Impression Products under a sales agreement which prohibited the purchaser’s reuse and resale. Subsequently, Lexmark filed a U.S. patent infringement suit based upon Impression Products’ sales of toner cartridges initially sold in (i) the United States and (ii) other countries and then imported into the United States. The trial court dismissed the infringement suit for U.S. sales based upon patent exhaustion, but it did not dismiss the lawsuit based upon foreign sales and patent exhaustion.[1]

The en banc U.S. Court of Appeals for the Federal Circuit [hereinafter ‘the Federal Circuit’] held that for the patent owner’s sales occurring in the United States, Lexmark’s lawful post-sale restrictions, with adequate notice, prevents patent exhaustion. For Lexmark’s initial international sales, the Federal Circuit held that a U.S. patent owner does not forfeit the right to prevent infringing products from entering the U.S. The Federal Circuit did not follow Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013) [hereinafter ‘Kirtsaeng] which held that that a U.S. copyright owner does not retain rights to tangible items containing copyright if the owner voluntarily sells these items outside the United States.

The Court reversed the Federal Circuit and held that a U.S. patentee’s voluntary sale of patented items in the United States is authorized and exhausts all U.S. patent rights in those products. It further held that a sale is authorized even if there is non-compliance with contractual post-sale restrictions. The Court relied in part upon Quanta Computers, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) which held that a patentee’s authorized sale through its licensee removed products from patent protection. The Court stated that extending U.S. patent rights beyond the first sale adversely affects business, especially in transactions with used products. However, the Court further stated that a breach of contract lawsuit for non-compliance with post-sale restrictions was a possible remedy.

For international sales, the Court found Kirtsaeng controlling, and so a patentee’s authorized sale of a product item anywhere in the world also exhausts patent rights. In sum, post-sale restrictions and sale location do not result in patent infringement by the purchaser, because the only relevant inquiry is whether the patentee voluntarily transferred an item of patented technology for a one-time financial reward.


[1] Patent exhaustion is defined as the absence of patent rights in a product after a patentee’s voluntary sale of a product, and where that product is a tangible representation of a U.S. patented technology. A licensee in the present context is defined as those rights transferred to another by a patent owner to use, sell or create the patented technology, but without transferring ownership of the patented technology.