In the License Agreement, LGE authorized Intel to make and sell microprocessor products using the patented inventions.

This point is not discussed in the Court's opinion, which recites the facts only in very limited terms because the record was under seal to protect trade secrets.

Quanta prevailed in the district court under the exhaustion doctrine,[3] but on appeal the Federal Circuit held that the exhaustion doctrine did not apply because of the statement in the Master Agreement that combination products were not licensed, given the Federal Circuit's 1992 ruling in Mallinckrodt, Inc. v. Medipart, Inc.[4] that a seller of patented goods could by notice impose a post-sale restraint on its customer's use of the goods.

Additionally, the Federal Circuit held that the exhaustion doctrine did not apply, in any event, to method patents.

"[8] According to the court, the tests for restrictions and 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.

Thus, when the Quanta Court said that "everything inventive about each patent is embodied in" the licensed Intel products, which "embody the essential features of the [licensed] patents", the Court was in effect saying that the combination of a novel Intel microprocessor in a conventional manner with an old personal computer is an exhausted combination.

Accordingly, no weight would be put on the fact that separate patents had issued to LGE on the inventive device and on the old combination that included it.

LGE's argument for non-exhaustion sought to invoke the doctrine of General Talking Pictures Corp. v. Western Electric Co.[24] In that case, the patentee had granted no license for "commercial" amplifiers.

Nothing in the License Agreement restricts Intel's right to sell its microprocessors ... to purchasers who intend to combine them with non-Intel parts.

That this was a critical error (for LGE) is confirmed by the Court's final statements in its opinion: The License Agreement authorized Intel to sell products that practiced the patents.

In footnote 7, the Court commented: We note that the authorized nature of the sale to Quanta does not necessarily limit LGE's other contract rights.

The impact of Quanta is problematic, largely because the decision avoided deciding many issues, presumably in the interest of maintaining consensus.

[25]The Court's failure to approve or reject the precedent on which the Federal Circuit had relied in its decision in Quanta, Mallinckrodt, Inc. v. Medipart, Inc., which had limited the applicability of the exhaustion doctrine when a sale was made "conditional," further contributed to business uncertainty about permissible license restrictions.

But, as one commentator observed: The Supreme Court, in Quanta, was widely expected to rule on whether Mallinckrodt was good law.

... Because the Supreme Court sidestepped the issue, it remains unclear to what extent a patentee can use a conditional license to impose restrictions on downstream purchasers.

The Court did not address the issue of "constructive" authorization—that is, authorization as a matter of law in certain circumstances, whether or not the patentee or licensor likes it or tries to avoid it.

Under the former, a patentee may limit the scope of a manufacturer-licensee's license to a defined field—such as microprocessors not incorporated into computers—and then the use of those micropressors as computer components is a patent infringement.

However, as Quanta seemingly holds, when a restriction is not clearly and explicitly stated the exhaustion doctrine applies.

In a brief to the Supreme Court (at its request) when the petition for writ of certiorari was pending, the Solicitor General observed that a curious "anomaly" existed between the exhaustion doctrine and General Talking Pictures doctrine: [T]here is a seeming anomaly in allowing a patentee to achieve indirectly –- through an enforceable condition on the licensee –– a limitation on use or resale that [because of the exhaustion doctrine] the patentee could not itself impose on a direct purchaser, [yet] the distinction is a necessary and explicable result of the Court's decision in General Talking Pictures.For reasons that so far have not been explained in any publicly available document, the Government deleted this passage from its subsequent brief on the merits.

[32] As the Government brief suggested, on the one hand, the exhaustion doctrine prohibits post-sale restraints on a patentee's (or its licensee's) sale of goods, while on the other hand General Talking Pictures permits a patentee to place post-sale limitations on its manufacturing licensee's sale of goods if the license to manufacture uses the right, wording.

[35] The Quanta court did make clear, however, that it recognized the fundamental difference in law between a sale of patented goods by a patentee and a patentee's license of another to manufacture the patented goods, which the Supreme Court had explained in United States v. General Electric Co.[36] At the same time, the Court made it clear that LGE had failed to license Intel in language that complied with the General Talking Pictures doctrine, which could have changed the outcome.

The House of Lords considered whether contract could defeat the similar doctrine against derogation from title in British Leyland Motor Corp. v. Armstrong Patents Co.

In Static Control Components, Inc. v. Lexmark Int'l, Inc., the district court reconsidered its decision in this case and granted a judgment as a matter of law (JMOL) in favor of the alleged infringer.

However, it did not enter into any conventional bilateral contract selling the toner cartridges to the public on a "conditional sale" basis.

The Supreme Court's broad statement of the law of patent exhaustion simply cannot be squared with the position that the Quanta holding is limited to its specific facts.

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.