Patent exhaustion jurisprudence “focuses on the exhaustion of the patents at issue in their entirety, rather than the exhaustion of the claims at issue on an individual basis.” Accordingly, even the method claims of a given patent may be exhausted by the authorized sale of a product that embodies the apparatus claims. While the reach of this holding leaves room for further development, it highlights the importance of having claims that uniquely target different infringers, such as cartridge manufacturers directly in this instance, rather than indirectly via consumer actions.
Background / Facts: The patents here from Keurig relate to single-serve coffee brewers using specialized cartridges. Consumers insert a cartridge into the brewer, hot water is forced through the cartridge, and a beverage is dispensed. The claims cover the brewers and methods of using them to make beverages by piercing the cartridges with tubular inlet and outlet probes. The accused infringer manufactures and sells cartridges for use in Keurig’s brewers, but does not make or sell brewers themselves. A consumer using these cartridges in certain Keurig brewer models would perform all the operations recited in the method claims of the patents, however, which would ordinarily lead to a finding that the manufacturers induced and contributed to that infringement if the patents were in full force.
Issue(s): Whether Keurig’s initial authorized sale of a patented item that completely practiced the claimed invention, i.e., their brewer, exhausted Keurig’s patent rights.
Holding(s): Yes. “Keurig acknowledges that its brewers are commercial embodiments of the apparatus claims … and does not dispute that its rights in its brewers were exhausted with respect to the apparatus claims of the asserted patents. … Instead, Keurig alleges that purchasers of its brewers infringe its brewer patents by using [the accused] cartridges to practice the claimed methods and therefore that [the cartridge manufacturer] is liable for induced infringement. However, as the Supreme Court long ago held, ‘[w]here a person ha[s] purchased a patented machine of the patentee or his assignee, this purchase carrie[s] with it the right to the use of the machine so long as it [is] capable of use.’ … Keurig sold its patented brewers without conditions and its purchasers therefore obtained the unfettered right to use them in any way they chose, at least as against a challenge from Keurig. We conclude, therefore, that Keurig’s rights to assert infringement of the method claims of the … patents were exhausted by its initial authorized sale of Keurig’s patented brewers.”