Quanta Computer v. LG Electronics

Outline

1. Patent exhaustion
   1. Brief review of past Supreme Court precedent
   2. Federal Circuit departure from Supreme Court in recent years
2. Quanta Computer Inc. v. LG Electronics Inc.
   1. Brief overview of facts
   2. Lower court rulings
   3. Supreme Court ruling
3. The impact
   1. On existing licensing agreements
   2. Recourse for companies that paid royalties?
   3. Patent exhaustion for downstream transactions
   4. Patents for methods or processes — what does the ruling mean for them? Does it give a picture of what the future may hold?
   5. What issues of patent exhaustion remain open after Quanta?
4. Where do we go from here?
   1. How should those entering licensing agreements adjust their strategy?
   2. What should existing patent holders do?
   3. How can IP owners and licensors protect their rights through patent law?
   4. How can IP owners and licensors protect their rights through contract law?

Benefits

The panel reviewed these and other key questions: 

• What methods remain available to patent owners to enforce their patents against downstream purchasers and users?
• Although patent exhaustion can't be "contracted around," are remedies available to patentees under conditional licenses or other contract law theories?
• What are the best practices for patent owners and licensees to ensure that current and future licensing arrangements incorporate the lessons of Quanta?