901479977: Quanta for Petitioners

Brief of Minebea in Support of Petitioners

1. Based on precedents, after the first authorized sale of a patented article the patentee can no longer control the article's disposition or sale.

Precedent

Adams

• "when the patentee sells an instrument whose sole value is its use, he receives the consideration for its use and he parts with the right to restrict that use."
• Chief Justice Taney says "when the patented article passes to the hands of the purchaser, it is no longer within the limits of the monopoly."

Univis

• reiterates the fact that this principle is uniform and has not changed
• This rule serves its purpose in limiting the power of a patentee to control the patented article after sale as he has already received payment.

2. The First Sale Doctrine was violated in the federal circuit's decision to allow LGE to exercise control over the use of the patented article.

• Doesn't follow concur with what was ruled in Univis, the most recent case regarding these matters, and is therefore incorrect
• "thwarts vital safeguards built into the patent law"
• if they demand additional royalties for their product being used in conjunction with others, what is to stop them from adding more royalties. Thus potentially creating infinite additional royalties for a potentially small product. It would be financially destructive and defeat the purpose of expanding the art, because there would be so many royalties involved in using the product.
• this case follows almost exactly the same as that of Univis and that previous ruling was opposite.
• in univis it was stated, "whether the licensee sells the patented article in its completed form or sells it before completion for the purpose of enabling the buyer to finish and sell it, he has equally parted with the article, and made it the vehicle for transferring to the buyer ownership of the invention with respect to that article."
• LGE was attempting to expand its monopoly
• Since 1893 it has been made painfully clear that many attempts have been made to circumvent the first sale doctrine but the court has rejected each of those attempts as evidenced by Keeler, Adams, and Hobble
• This ruling blurs the law on First Sale Doctrine, and expands the rights of the patentee