Mallinckrodt, Inc. v. Medipart, Inc.

This fact apparently led the defendant Medipart to go into the recycling business, in which Mallinckrodt itself had no direct interest (it chose to sell only new devices).

However, Mallinckrodt asserted to the court that "potential adverse consequences, such as infectious disease transmission" provided the reason for its imposing the restriction against reuse.

Medipart then moved to dismiss the patent infringement claim because of the exhaustion doctrine; the district court agreed and granted summary judgment.

It held that, despite the breadth of the language of the Supreme Court's decisions on exhaustion, the apparently absolute rule against post-sale restrictions on patentees' customers should apply only to price-fixes and tie-ins.

In cases not involving price-fixes or tie-ins, such as this one, patentees were free to limit their customer's use of products as long as the restrictions did not so greatly hinder competition as to amount to an antitrust violation.

According to the court, the legal tests for post-sale restrictions and for misuse were alike, outside the tie-in and price fixing area: "To sustain a misuse defense involving a licensing arrangement not held to have been per se anticompetitive by the Supreme Court, a factual determination must reveal that the overall effect of the license tends to restrain competition unlawfully in an appropriately defined relevant market.

In April 2015, the Federal Circuit sua sponte called for briefing and amicus curiae participation in an en banc consideration of whether Mallinckrodt should be overruled in light of the recent Supreme Court decision in the Quanta case.

[13] The case was argued in 2017 and was decided in June 2017; the Supreme Court emphatically rejected enforcement of post-sale patent rights, thereby disapproving the decision in Mallinckrodt.