The problem the court may choose, as stated by the petition for review, is that: "Whether the Federal World erred by keeping, in struggle with decisions of this Judge and different courts of speaks, that respondent's patent rights were not tired by their license agreement with Intel Company, and Intel's future purchase of product beneath the license to petitioners."
The case involves some patents that LG registered to Intel Corp. and Intel's subsequent income of items to next parties pursuant to that license. LG's patents cover various programs and strategies for improving the function of personal computers.
Below their license with LG, Intel was licensed to market microprocessors and chipsets to next parties. Nevertheless, it absolutely was necessary to advisethat they certainly were not approved to combine the Intel services and products with non-Intel components. This is because LG's patents covered maybe not the merchandise straight nevertheless the procedures that occurred from their mix with other components.
LG sued numerous firms that obtained the Intel microprocessors and chipsets for infringement of their patents. The trial judge awarded summary judgment in favor of the customers, ruling that the licensing agreement exhausted LG's patent rights.
On appeal, the Federal World solved the trial court's finding of exhaustion. Fatigue, the judge reasoned, applies only to an unconditional sale, the one that exhausts the patentee's proper to manage the purchaser's future use of the device. It generally does not connect with an expressly conditional license or purchase, the judge said.
Given that LG's license to Intel carried the condition that Intel had to advise consumers of its restricted scope, the license was clearly conditional, the court held."The LGE-Intel license expressly disclaims granting a certificate letting pc process suppliers to mix Intel's registered parts with different non-Intel parts," the judge explained.
"More over, that conditional agreement needed Intel to advise their customers of the restricted range of the certificate, which it did. Though Intel was free to sell their microprocessors and chipsets, those sales were conditional, and Intel's customers were expressly prohibited from infringing LGE's mix patents."
In asking the Supreme Judge to examine the Federal Circuit's decision, Quanta and one other petitioners argued that the Federal Circuit's request of the fatigue doctrine was unlike obviously recognized Supreme Judge precedent.