Impression Products, Inc. v Lexmark International, Inc.

Impressions sought review of the Federal Circuit decisions holding sale of a patented item does not exhaust the patent holders’ rights and that this applies for both domestic and foreign sales. The Court, with Ginsberg dissenting in part and Gorsuch not participating, reversed. As to domestic sales, the Court held that under longstanding common law and Court precedent once a patent holder sells an item it exhausts in patent rights and the holder cannot prevent the buyer form selling the product or using it in any legal way and this rule is necessary to prevent the obstruction of the free flow of commerce. It held the Federal Circuit erred in not identifying patent rights as an addition to the normal bundle of property rights which does not limit the transfer of all other property rights on sale. It also held any remedy for the sale from purchaser to Impression lies in a contract suit against purchaser. As to foreign sales, the majority held that exhaustion also controls just as the similar first sale doctrine in copyright allows purchasers to dispose of the purchased item. Ginsberg dissented on foreign sales arguing that patent law’s territorial nature makes foreign sales operate independently of United states patent law and thus the exhaustion doctrine should not apply and that the copyright case should not be followed as there was a statutory provision on first sale doctrine and the law on first sale is harmonized across many countries while patent law is not.

Lee v United States

Lee sought review of the 6th Circuit decision denying his motion to withdraw his guilty plea because he could not show prejudice from his plea attorney’s false assurance that a pleading guilty to a drug charge would not result in deportation. The Court, 6-2 with Gorsuch not participating, reversed and remanded. The majority held that Lee proved prejudice here as deportation was the key issue on whether or not to plead guilty to drug charges, whether or not there is a viable defense is not dispositive as the prejudice here is the denial of trial and it can be rational to risk more prison time on the hope of an acquittal as some chance to avoid deportation is better than no chance. Thomas, dissented arguing there is no right to an attorney at plea negotiations and further arguing, joined by Alito, that there can be no prejudice here where the evidence was overwhelming, deportation was sure and it is irrational to take a course leading to more prison time followed by deputation than less time followed by deportation and the majority holding will undermine the finality of guilty pleas and impose significant burdens on district courts to hold hearings to see if counsel omitted a paramount concern during discussions of a plea offer.