Doctrine of non-derogation from grants

Last updated March 25, 2019

The doctrine of non-derogation from grants is a principle of the law of England and Wales. As the House of Lords explained in British Leyland Motor Corp. v. Armstrong Patents Co. , it states that a seller of realty or goods is not permitted to take any action (such as bringing an infringement action) that will lessen the value to the buyer of the thing sold.

The House of Lords of the United Kingdom, in addition to having a legislative function, historically also had a judicial function. It functioned as a court of first instance for the trials of peers, for impeachment cases, and as a court of last resort within the United Kingdom. In the latter case the House's jurisdiction was essentially limited to the hearing of appeals from the lower courts. Appeals were technically not to the House of Lords, but rather to the Queen-in-Parliament. By constitutional convention, only those lords who were legally qualified heard the appeals, since World War II usually in what was known as the Appellate Committee of the House of Lords rather than in the chamber of the House.

United States federal law recognises similar doctrines such as the exhaustion doctrine or doctrine of implied license. [1] A similar effect has also been realised in United States patent law under the doctrine of repair and reconstruction. [2]

The exhaustion doctrine, also referred to as the first sale doctrine, is a U.S. common law patent doctrine that limits the extent to which patent holders can control an individual article of a patented product after a so-called authorized sale. Under the doctrine, once an authorized sale of a patented article occurs, the patent holder's exclusive rights to control the use and sale of that article are said to be "exhausted," and the purchaser is free to use or resell that article without further restraint from patent law. However, under the repair and reconstruction doctrine, the patent owner retains the right to exclude purchasers of the articles from making the patented invention anew, unless it is specifically authorized by the patentee to do so.

An implied license is an unwritten license which permits a party to do something that would normally require the express permission of another party. Implied licenses may arise by operation of law from actions by the licensor which lead the licensee to believe that it has the necessary permission.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others from using a new technology. Specifically, it is the right to exclude others from making, using, selling, offering for sale, importing, inducing others to infringe, and/or offering a product specially adapted for practice of the patent.

An important difference between the doctrine of non-derogation from grants and other doctrines, particularly implied license, that are used to accomplish similar results is that the doctrine of non-derogation from grants is "inherent" as a matter of property law and apparently cannot be avoided by a seller's use of language attempting to negative application of the doctrine or by trial counsel's pointing to evidence of intent not to relinquish patent rights or copyright. In contrast, the other doctrines may be vulnerable to contractual disclaimers or evidence of intent not to grant intellectual property rights. The issue is discussed to some extent in the courts' opinions in British Leyland and Quanta Computer, Inc. v. LG Electronics, Inc.

Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a decision of the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine, and in doing so made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that the exhaustion doctrine is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to practice the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, the part of decision below that held that the exhaustion doctrine was limited to product claims and did not apply to method claims.

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Estoppel is a judicial device in common law legal systems whereby a court may prevent, or "estop" a person from making assertions or from going back on his or her word; the person being sanctioned is "estopped". Estoppel may prevent someone from bringing a particular claim, particularly if a promise unsupported by consideration is being relied on by the other party. Legal doctrines of estoppel are based in both common law and equity.

In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains economic competition substantially can also violate United States antitrust law.

The doctrine of assignor estoppel is a doctrine of United States patent law barring a patent's seller (assignor) from attacking the patent's validity in subsequent patent infringement litigation. The doctrine is based on the doctrine of legal estoppel, which prohibits a grantor from challenging the validity of his/her/its grant.

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents and the doctrine of prosecution history estoppel.

Prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by the amendments. Although primarily a U.S. term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the U.S.

Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, is a decision of the United States Court of Appeals for the Federal Circuit, in which the court appeared to overrule or drastically limit many years of U.S. Supreme Court precedent affirming the patent exhaustion doctrine, for example in Bauer & Cie. v. O'Donnell.

Licensee estoppel is a doctrine under which a licensee of an intellectual property right, generally a patent or a trademark, is estopped from challenging the validity of the licensed property. The basis for the doctrine is the premise that a licensee should not be able to enjoy the benefit of an agreement and at the same time attack the validity of the intellectual property that forms the basis of the agreement.

British Leyland Motor Corp. v Armstrong Patents Co. is a 1986 decision of the House of Lords concerning the doctrine of non-derogation from grants. This doctrine is comparable to, but somewhat broader than, the doctrine of legal estoppel, assignor estoppel, or estoppel by deed in U.S. law. Under the doctrine of non-derogation from grants, a seller of realty or goods is not permitted to take any action that would lessen the value to the buyer of the thing sold.

Canon Kabushiki Kaisha v Green Cartridge Co Ltd is a 1997 decision of the Judicial Committee of the Privy Council (1) re-affirming the principle of UK copyright law that the copying of functional three-dimensional objects is an infringing reproduction of the drawings of the objects, and (2) limiting the doctrine of non-derogation from grants as to chattels to "the case in which the unfairness to the customer and the anticompetitive nature of the monopoly is as plain and obvious as it appeared to the House of Lords in the British Leyland case."

<i>Aro Manufacturing Co. v. Convertible Top Replacement Co.</i> United States Supreme Court case

Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961), is a United States Supreme Court case in which the Court redefined the U.S. patent law doctrine of repair and reconstruction. The decision is sometimes referred to as Aro I because several years later the Supreme Court readdressed the same issues in a second case in 1964 involving the same parties—Aro II.

The doctrine of repair and reconstruction in United States patent law distinguishes between permissible repair of a patented article, which the right of an owner of property to preserve its utility and operability guarantees, and impermissible reconstruction of a patented article, which is patent infringement. The doctrine is explained in Aro Mfg. Co. v. Convertible Top Replacement Co. The Aro case states the rule in these terms:

The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to "in fact make a new article," after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity. …Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property.

United States v. General Electric Co., 272 U.S. 476 (1926), is a decision of the United States Supreme Court holding that a patentee who has granted a single license to a competitor to manufacture the patented product may lawfully fix the price at which the licensee may sell the product.

This collection of lists of law topics collects the names of topics related to law. Everything related to law, even quite remotely, should be included on the alphabetical list, and on the appropriate topic lists. All links on topical lists should also appear in the main alphabetical listing. The process of creating lists is ongoing – these lists are neither complete nor up-to-date – if you see an article that should be listed but is not, please update the lists accordingly. You may also want to include Wikiproject Law talk page banners on the relevant pages.

Fujifilm Corp v. Benun, 605 F.3d 1366 was a case in which the United States Court of Appeals for the Federal Circuit affirmed the judgment made by the United States District Court for the District of New Jersey that the defendants infringed patents owned by Fujifilm Corporation.

Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. ___ (2017), is a decision of the Supreme Court of the United States on the exhaustion doctrine in patent law in which the Court held that after the sale of a patented item, the patent holder cannot sue for patent infringement relating to further use of that item, even when in violation of a contract with a customer or imported from outside the United States. The case concerned a patent infringement lawsuit brought by Lexmark against Impression Products, Inc., which bought used ink cartridges, refilled them, replaced a microchip on the cartridge to circumvent a digital rights management scheme, and then resold them. Lexmark argued that as they own several patents related to the ink cartridges, Impression Products was violating their patent rights. The U.S. Supreme Court, reversing a 2016 decision of the Federal Circuit, held that the exhaustion doctrine prevented Lexmark's patent infringement lawsuit, although Lexmark could enforce restrictions on use or resale of its contracts with direct purchasers under regular contract law. Besides printer and ink manufacturers, the decision of the case could affect the markets of high tech consumer goods and prescription drugs.

The reverse doctrine of equivalents is a legal doctrine of United States patent law, according to which a device that appears to literally infringe a patent claim, by including elements or limitations that correspond to each element or limitation of the patent claim, nonetheless does not infringe the patent, because the accused device operates on a different principle. That is, "it performs the same or a similar function in a substantially different way." It has been said that "the purpose of the ‘reverse’ doctrine is to prevent unwarranted extension of the claims beyond a fair scope of the patentee’s invention."

References

↑ A recent decision of the United States Court of Appeals for the Federal Circuit, Transcore, LP v. Electronic Transaction Consultants Corp. (F.3d), April 8, 2009, not yet officially reported, conflates these doctrines in the following terms: "TransCore sought to enforce the ’946 patent in derogation of the rights it granted under the TransCore–Mark IV settlement agreement. That attempted derogation is prevented by legal estoppel, which gives rise to the implied license." Id. at -- n.4.
↑ See Aro Mfg. Co. v. Convertible Top Replacement Co. , 365 U.S. 336 (1961).

Doctrine of non-derogation from grants

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