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06-937 QUANTA COMPUTER, INC. V. LG ELECTRONICS, INC DECISION BELOW: 453 F3d 1364 EXPEDITED BRIEFING SCHEDULE CERT. GRANTED 9/25/2007 QUESTION PRESENTED: Whether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent’s patent rights were not exhausted by its license agreement with Intel Corporation, and Intel’s subsequent sale of product under the license to petitioners. LOWER COURT CASE NUMBER: 05-1261, 05-1262, 05-1263, 05-1264, 05- 1302, 05-1303, 05-1304
In the case of Quanta Computer, Inc. v. LG Electronics, Inc., 2007, the United States Supreme Court addressed issues related to patent rights and exhaustion doctrine. LG Electronics (LGE) held multiple patents for certain computer systems and licensed these patents to Intel Corporation under a contract that stipulated Intel's customers were not impliedly licensed to combine Intel products with non-Intel items in ways that would infringe LGE’s patents. When Quanta Computer purchased microprocessors from Intel and used them in their own computers (in combination with non-Intel parts), LGE sued for patent infringement. The Supreme Court ruled unanimously in favor of Quanta Computers stating that once a patented item is sold or licensed legitimately, the patent holder's exclusive rights are exhausted under what is known as "patent exhaustion" or "first sale doctrine". This means they cannot control how it is subsequently used or resold because those rights have been 'exhausted' by the initial authorized sale.
In the dissenting opinion for Quanta Computer, Inc. v. LG Electronics, Inc., Justice Stevens expressed concern over the majority's interpretation of patent exhaustion doctrine and its application to method patents. He argued that a patented device does not always embody a patented process it might be used to perform, hence selling the device should not exhaust rights in the process patent. The justice also disagreed with how broadly the court applied this principle without considering whether purchasers were aware they received an implied license or if restrictions accompanied sales contracts. Furthermore, he criticized their decision as inconsistent with previous rulings where limitations on use had been upheld even after authorized sale of a product under certain conditions.