Exhausted Combination Doctrine - Is The Lincoln Engineering Doctrine Obsolete?

Is The Lincoln Engineering Doctrine Obsolete?

The Federal Circuit held in 1984 that this doctrine is outdated and no longer reflects the law. In effect, the Federal Circuit overruled the Supreme Court on this point — or claimed that the passage of the 1952 patent recodification law had done so.

In its decision in Quanta Computer, Inc. v. LG Electronics, Inc., however, the Supreme Court seems to have assumed without any discussion that its old precedents such as Lincoln Engineering (uncited in the Quanta opinion) are still in force, as least with regard to the exhaustion doctrine. In Quanta, the Court considered the sale of a patented microprocessor to "exhaust" not only the patent on the microprocessor but the patent on a conventional personal computer (PC) containing the microprocessor, since the PC patent had essentially the same inventive concept (or departure from the prior art) as the microprocessor patent.

After 1984 it appeared that it was possible to obtain patents on old combinations, for example not only a new motor but also an otherwise conventional disc drive containing the new motor. It has also been held that the sale of the motor, in such a case, does not exhaust the patent on the disc drive containing the new motor. Hence, a purchaser of the motor who incorporated it into a disk drive would infringe the disk drive patent. It is now uncertain whether such patents are valid. In any event, the Quanta decision appears to hold that the exhaustion doctrine shields from infringement liability the foregoing motor purchaser that incorporates the motor into a disk drive.