Patent Exhaustion/First Sale/Misuse as Affirmative Claims

Abstract

The doctrines of patent exhaustion, or first sale, and patent misuse are generally only considered affirmative defenses to patent infringement claims. However, under MedImmune, where patent misuse caused or threatened injury to an entity, that entity may assert misuse as an independent claim. Moreover, several recent precedents indicate that patent exhaustion or misuse may also be affirmative claims. This paper discusses these developments.

Keywords: patent exhaustion, first sale, patent misuse, patent affirmative defenses, patent affirmative claims, MedImmune, ExcelStor, B. Braun Medical

JEL Classification: K39, K49, O34