Heightening Tension between the Exhaustion Doctrine and Field-of-use Licensing in Information Technology Tests the Limits of Each Doctrine (Part 2)

摘要

Part 1 of this article discussed the historical development of the US exhaustion doctrine to the present. This Part 2 discusses a recent decision of the Federal Circuit that involves a complex licensing scheme with an unusual pattern that gives the scheme characteristics arguably bringing it into conflict with the exhaustion doctrine, on the one hand, but safely within the doctrine permitting the licensing of limited fields of use, on the other hand. The author suggests that the Federal Circuit's reasoning in reversing a grant of summary judgment against the scheme is not faithful to Supreme Court precedent, because it imposes an erroneous standing requirement on invoking the exhaustion doctrine and uses an unduly narrow standard to determine whether what is sold and what infringes the patent are sufficiently alike to trigger the exhaustion doctrine. Nonetheless, the court may have reached a correct result in the particular case: unresolved and unaddressed issues could be essential to determining the proper outcome, precluding summary judgment. In any event, for practical reasons, the Federal Circuit's new doctrine may greatly limit the future application of the exhaustion doctrine in several fields of new technology, particularly information technology. That may suggest a need to devise a new legal analysis to supplement the exhaustion doctrine. A form of equitable estoppel analysis, based on the underlying conceptions of the British Leyland case, is proposed to provide that supplement.