Intellectual Property Report: July 2013

07/24/2013 / Intellectual Property Group

In the July Issue:

  • Kirtsaeng v. John Wiley & Sons, Inc.:  Supreme Court Finds Expansive Scope for First Sale Doctrine

  • Discovery in Post-Issuance Review Proceedings

Kirtsaeng v. John Wiley & Sons, Inc.:  Supreme Court Finds Expansive Scope for First Sale Doctrine
By John A. Kvinge

United States copyright law provides the owner of a copyright with certain rights, including the right to prevent unauthorized distribution or sale of a copyrighted work. Section 602(a)(1) of the Copyright Act states that the right to prevent importation into the United States is included in the owner’s right to control distribution. However, under the first sale doctrine, set forth in Section 109 of the Act, the sale of a work “lawfully made under this title” exhausts the copyright owner’s exclusive distribution right, allowing the work to be resold, given as a gift, imported, or otherwise disposed of as the purchaser of the work sees fit.


The Supreme Court previously held in Quality King Distributors v. L’anza Research Int’l, Inc. that the first sale doctrine covers the foreign sale of a work that was printed in the United States. The Supreme Court left unanswered whether a book that was both printed and sold abroad qualifies as a work “lawfully made under” the Copyright Act. In Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court considered this question, and held that the first sale doctrine covers copyrighted works that are both printed and sold abroad.  



Discovery in Post-Issuance Review Proceedings
By Ryan C. Smith

The America Invents Act (AIA) provides for Inter Partes Review (IPR) proceedings and Post-Grant Review (PGR) proceedings in front of the Patent Trial and Appeal Board (PTAB). This article discusses the avenues for discovery in each type of proceeding.


Three types of “discovery” may be utilized during a PGR or IPR proceeding. The first, “mandatory initial disclosures,” may be agreed to between the parties, or otherwise sought by motion. An agreement to produce initial disclosures must be filed no later than the Patent Owner’s Preliminary Response. The initial disclosures should be filed as exhibits. The information contained in the initial disclosures is subject to discovery during the trial stage of an IPR or PGR proceeding.


Intellectual Property Department Attorneys:


Craig J. Lervick






Molly T. Eichten


James P. Quinn
Glenna L. Gilbert


Ryan C. Smith
John A. Kvinge




This alert is provided as a service to our clients and firm associates. While the information provided in this publication is believed to be accurate, it is general in nature and should not be construed as legal advice.  

You should consult an attorney for advice regarding your individual situation.