Topic: Patent Exhaustion – The First Sale Doctrine and Other Key Considerations
Speaker: Samuel F. Ernst, Assistant Professor, Dale E. Fowler School of Law, Chapman University
Date: Tuesday, April 28, 6:00 pm
Del Mar Marriott
11966 El Camino Real
San Diego, CA 92130
Join us for a lively and informative presentation focused on:
PATENT EXHAUSTION FOR THE EXHAUSTED DEFENDANT: SHOULD PARTIES BE ABLE TO CONTRACT AROUND EXHAUSTION IN SETTLING PATENT LITIGATION?
Professor of Law, and former Covington and Burling Partner, Samuel R. Ernst, will discuss the doctrine of patent exhaustion, sometimes referred to as the first sale doctrine. It provides that when a patent holder unconditionally authorizes another party to sell a patented item, the patent holder’s right to exclude with respect to the patented item is “exhausted.” The licensee can then sell the patented item to a third party—a downstream purchaser—and the patent holder will not be able to sue the third party for patent infringement based on the resale or other use of that item. Patent-holders settling infringement litigation often seek to draft a license agreement that precludes application of the exhaustion doctrine, so that they may continue to pursue licensed products downstream. Such provisions are likely ineffective if drafted as post-sale restrictions on what downstream purchasers may do with their patented products. However, one can argue that it is possible to contract around exhaustion by limiting the scope of the authorized sale (a “pre-sale restriction”) or through other clever licensing devices. During this presentation, we will explore the question of whether such provisions should be enforceable as a matter of public policy if they are included in a license to settle litigation.
Samuel F. Ernst, Assistant Professor, Dale E. Fowler School of Law, Chapman University
Professor Ernst’s scholarship focuses on patent law and he teaches in the areas of intellectual property, contracts, and civil litigation practice. Prior to joining the Fowler School of Law in 2013, Professor Ernst was a partner at the international law firm of Covington & Burling in San Francisco, practicing intellectual property, commercial, and appellate litigation, while maintaining an active pro bono practice focusing on veterans disability recovery and homeless advocacy. In 2010, Professor Ernst was recognized by the Federal Circuit Bar Association for his work on behalf of veterans. In 2006 and 2008, he received a Certificate of Excellence from the Berkeley Food and Housing Project. Prior to joining the Fowler School of Law Professor Ernst taught pre-trial civil litigation at the UC Berkeley School of Law. Professor Ernst earned his JD Magna Cum Laude from Georgetown University Law Center. He has a BA in Modern Literary Studies from UC Santa Cruz and an MA in Comparative Literature from UCLA.
Professor Ernst’s scholarly works:
- “Protecting the Boundaries: Unclaimed Consideration in the Patentee’s Social Contract,” Tulane Journal of Technology & Intellectual Property, Volume 18 (forthcoming, 2015)
- “Introduction to the 2015 Chapman Law Review Symposium: Trolls or Toll-Takers: Do Intellectual Property Non-Practicing Entities Add Value to Society?,” 2015 Chapman Law Review __ (forthcoming, 2015)
- “Patent Exhaustion for the Exhausted Defendant: Should Parties be Able to Contract Around Exhaustion in Settling Patent Litigation?,” 2014 University of Illinois Journal of Law, Technology & Policy 445 (2014) (peer reviewed).
- “Does the California Eraser Law Withstand Dormant Commerce Clause Scrutiny? Does it Do Any Good at All?“, Orange County Lawyer, Vol 56, No. 7, July 2014, at 14
- The Honorable Timothy B. Dyk and Samuel F. Ernst, Patents, in Business and Commercial Litigation in the Federal Courts, (West 3d ed. 2011) (Robert L. Haig, ed.) (annual supplements in 2012, 2013, 2014 and forthcoming, 2015)
Recent Creative, Scholarly Work and Publications
- Patent Exhaustion for the Exhausted Defendant: Should Parties be Able to Contract Around Exhaustion in Settling Patent Litigation?, 2014 UNIVERSITY OF ILLINOIS JOURNAL OF LAW TECHNOLOGY & POLICY, Issue 2 at __ (forthcoming, 2014) (peer reviewed).
- Does the California Eraser Law Withstand Dormant Commerce Clause Scrutiny? Does it Do Any Good at All?, ORANGE COUNTY LAWYER, Vol 56, No. 7, July 2014, at 14.
- The Honorable Timothy B. Dyk and Samuel F. Ernst, Patents, in BUSINESS AND COMMERCIAL LITIGATION IN THE FEDERAL COURTS, (West 3d ed. 2011) (Robert L. Haig, ed.) (annual supplements published in 2012, 2013, and forthcoming in 2014).