United States Court of Appeals 

for the Federal Circuit

______________________

LEXMARK INTERNATIONAL, INC.,

Plaintiff-Cross-Appellant

v.

IMPRESSION PRODUCTS, INC.,

Defendant-Appellant

QUALITY CARTRIDGES, INC., JOHN DOES, 1-20, 

BLUE TRADING LLC, EXPRINT INTERNATIONAL,

INC., LD PRODUCTS, INC., PRINTRONIC 

CORPORATION, TESEN DEVELOPMENT (HONG 

KONG) CO. LTD., BENIGNO ADEVA AND HIS 

COMPANIES,

Defendants

______________________

2014-1617, 2014-1619

______________________

Appeals from the United States District Court for the 

Southern District of Ohio in No. 1:10-cv-00564-MRB, 

Judge Michael R. Barrett.

______________________

SUA SPONTE HEARING EN BANC 

______________________

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,

MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, and 

HUGHES, Circuit Judges.
2 LEXMARK INTERNATIONAL, INC. v. IMPRESSION PRODUCTS, INC.

PER CURIAM.

O R D E R

This case was argued before a panel of three judges on 

March 6, 2015. The panel sua sponte requested a poll on 

whether to consider this case en banc in the first instance. 

A poll was conducted and a majority of the judges who are

in regular active service voted for sua sponte en banc 

consideration. 

Accordingly,

IT IS ORDERED THAT:

(1) The court sua sponte orders that this case be 

heard en banc under 28 U.S.C. § 46 and FED. R. APP. P.

35(a). The court en banc shall consist of all circuit judges 

in regular active service who are not recused or disqualified. 

(2) The parties are requested to file new briefs. The 

briefs should address the following issues: 

(a) The case involves certain sales, made abroad, of 

articles patented in the United States. In light 

of Kirtsaeng v. John Wiley & Sons, Inc., 133 S. 

Ct. 1351 (2012), should this court overrule Jazz 

Photo Corp. v. International Trade Commission, 

264 F.3d 1094 (Fed. Cir. 2001), to the extent it 

ruled that a sale of a patented item outside the 

United States never gives rise to United States 

patent exhaustion.

(b) The case involves (i) sales of patented articles 

to end users under a restriction that they use 

the articles once and then return them and (ii) 

sales of the same patented articles to resellers 

under a restriction that resales take place under the single-use-and-return restriction. Do 

any of those sales give rise to patent exhaus-
LEXMARK INTERNATIONAL, INC.IMPRESSION PRODUCTS, INC. 3

tion? In light of Quanta Computer, Inc. v. LG 

Electronics, Inc., 553 U.S. 617 (2008), should

this court overrule Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), to the 

extent it ruled that a sale of a patented article,

when the sale is made under a restriction that 

is otherwise lawful and within the scope of the 

patent grant, does not give rise to patent exhaustion?

(3) This appeal will be heard en banc on the basis of

the additional briefing ordered herein, and oral argument. 

An original and thirty copies of new en banc briefs shall 

be filed, and two copies of each en banc brief shall be 

served on opposing counsel. Impression Products, Inc.’s

en banc brief is due 45 days from the date of this order. 

Lexmark International, Inc.’s en banc response brief is 

due within 30 days of service of Impression Products, 

Inc.’s en banc brief, and the reply brief within 15 days of 

service of the response brief. Briefs shall adhere to the 

type-volume limitations set forth in Federal Rule of 

Appellate Procedure 32 and Federal Circuit Rule 32.

(4) Briefing should be limited to the issues set forth 

above.

(5) With respect to the Joint Motion for Entry of 

Stipulated Order Regarding Supplementations of the 

Record (A2554-66) (“stipulation”), it is the court’s understanding that any claims to the stipulation’s confidentiality are waived. See ECF Nos. 76, 78. Therefore, the court 

orders that the parties file a copy of the stipulation with 

the court within 10 days of this order. The court further 

orders that all exhibits referenced in the stipulation be 

filed with the court within 10 days. Any redactions to the 

exhibits must be in compliance with Federal Circuit Rule 

28, and limited in nature. If any part of any of the exhibits are marked as confidential, the parties are ordered to 
4 LEXMARK INTERNATIONAL, INC. v. IMPRESSION PRODUCTS, INC.

show cause for each redaction, to be filed simultaneously 

with the filing of the exhibits. 

(6) The court invites the United States Department of 

Justice to file a brief expressing the views of the United 

States as amicus curiae. Other briefs of amici curiae will 

be entertained, and any such amicus briefs may be filed 

without consent and leave of court but otherwise must 

comply with Federal Rule of Appellate Procedure 29 and 

Federal Circuit Rule 29.

(7) Oral argument will be held at a time and date to 

be announced later.

FOR THE COURT

 April 14, 2015 /s/ Daniel E. O’Toole

Date Daniel E. O’Toole

 Clerk of Court