Lexmark International, Inc. v. Impression Products, Inc.

*726Opinion for the court filed by Circuit Judge TARANTO, in which Chief Judge PROST and Circuit Judges NEWMAN, LOURIE, MOORE, O’MALLEY, REYNA, WALLACH, CHEN, and STOLL join. Dissenting opinion filed by Circuit Judge DYK, in which Circuit Judge HUGHES joins.

Congress has declared: “Except as otherwise provided in [the Patent Act], whoever, without authority makes, uses, offers to. sell, or sells any patented invention, within the United States or imports -into the United States any patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a); see id. § 154(a) (granting patentee “right to exclude others” from itemized actions). The doctrine of patent exhaustion (or “first sale” doctrine) addresses the circumstances in which a sale of a patented article (or' an article sufficiently embodying a patent), when the sale is made or authorized by the patentee,'confers on the buyer the “authority”’to engage in acts involving the article, such as resale, that are infringing acts in the absence of such authority. There is nothing “otherwise provided!’ on the issue in the Patent Act. In that respect, the Patent Act differs from the Copyright Act,, whose infringement, importation, and exclusive-rights provisions, 17 U.S.C. §§ 501, 602,106, are all subject to a separate, overriding statutory provision that grants owners of certain copyrighted articles a right to sell those articles “without the authority” of the copyright holder, id. § 109(a).

In this case, all of the initial sales at issue were made by the U.S. patentee, rather than by a licensee having authorization from the patentee. Some .of the initial sales were made domestically, some abroad. All of the domestic sales, and an unknown portion of the foreign sales, were accompanied- by clearly communicated restrictions on the buyer’s reuse and resale.

We decided to hear this ease en banc to consider whether two decisions of this court concerning the uncodified doctrine of patent exhaustion—one decision from 1992, the other from 2001—remain sound in light of later decisions of the Supreme Court. Today we reaffirm the principles of our earlier decisions.

First, we adhere to the holding of Mallinckrodt, Inc, v. Medipart, Inc., 976 F.2d 700 (Fed.Cir.1992), that a patentee, when selling a patented article subject to a.single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. Such resale or reuse, when contrary to the known,, lawful limits on the authority conferred at the time of the original sale, remains- unauthorized and therefore remains infringing conduct under the terms of § 271. Under Supreme Court precedent, a patentee may preserve its § 271 rights through such restrictions when licensing others to make and sell patented articles; Mallinckrodt held that there is no sound legal basis for denying the same ability to the patentee that makes and sells the articles itself. We find Mallinckrodt’s principle to remain sound after the Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 128 S.Ct. 2109, 170 L.Ed.2d 996 (2008), in which the Court did not have before it or address a patentee sale at all, let alone one made subject to a restriction, but a sale made by a separate manufacturer under a patentee-granted license conferring unrestricted authority to sell.

Second, we adhere to the holding of Jazz Photo Corp,. v. International Trade Comm’n, 264 F.3d 1094 (Fed.Cir.2001), *727that a U.S. patentee, merely-by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts in the absence of patentee-conferred authority. Jazz Photo’s no-exhaustion ruling recognizes that foreign markets under foreign sovereign control are not equivalent to the U.S. markets under U.S. control in which a U.S. patentee’s sale presumptively exhausts its rights in the article sold. A buyer may still rely on a foreign sale as a defense to infringement, but only by establishing an express or implied license—a defense separate from exhaustion, as Quanta holds—based on patentee communications or other circumstances of the sale. We conclude that Jazz Photo’s no-exhaustion principle remains sound after the Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons, Inc., — U.S. —, 133 S.Ct. 1351, 185 L.Ed.2d 392 (2013), in which the Court did not address patent law or whether a foreign sale should be viewed as conferring authority to engage in otherwise-infringing domestic acts. Kirt-saeng is a copyright case holding that 17 U.S.C. § 109(a) entitles owners of copyrighted articles to'take certain acts “without the authority” of the copyright holder. There is no counterpart to that provision in the Patent Act, under which a foreign sale is properly treated as neither conclusively nor even presumptively exhausting the U.S. patentee’s rights in the United States.

Background

The relevant facts are set forth in the limited record that the parties agreed was determinative of the result. Lexmark International, Inc. makes and sells printers as well as toner cartridges for its printers. Lexmark owns a number of patents that cover its cartridges and their use. The cartridges at issue here were first sold by Lexmark, some abroad and some in the United States. Some of the foreign-sold cartridges and all of the domestically sold cartridges at issue were sold, at a discount, subject to an express single-use/no-resale restriction. Impression Products, Inc. later acquired the cartridges at issue in order to resell them in the United States— the restricted ones after a third party physically modified them to enable re-use in violation of the single-use/no-resale restriction. Impression has resold the patented Lexmark cartridges at issue in the United States, and has imported those it acquired abroad. In each case, it has acted without affirmative authorization from Lexmark and, for the restricted cartridges, in violation of the express denial of authorization to engage in resale, and reuse. Impression’s actions infringe under 35 U.S.C. § 271—unless the fact that Lexmark ini-, tially sold the cartridges constitutes the grant of authority that makes Impression’s later resale and importation non-infringing under the doctrine of exhaustion. Whether Lexmark’s initial sales have that effect raises two questions—one regarding the single-use/no-resale restricted sales (wherever they, occur), the other regarding the initial foreign sales of all cartridges, whether restricted or not.

A

Lexmark offers buyers a choice. A buyer may purchase a “Regular Cartridge” at full price, in which case the buyer is not subject to any sale terms restricting reuse or resale of the cartridge. Alternatively, a buyer may purchase a “Return Program Cartridge” at a discount of roughly 20 percent, .subject to a single-use/no-resale restriction: the buyer may not reuse the cartridge after the toner runs out and may not transfer it to anyone but Lexmark once it is used, ie., the buyer must “re*728turn” the cartridge “only” to Lexmark. J.A. 2559.1 Lexmark and Impression stipulated in this case that the reduced price “reflects the value of the property interest and use rights conveyed to the purchaser under the express terms of the conditional sale contract and conditional single-use license conferred by Lexmark.” Id. The stipulation adds that “Lexmark has an express and enforceable contractual agreement with- each of its end-user customers.” J.A. 2562. And it is undisputed that all end users receive adequate notice of the restriction supporting the discounted price before they make their purchases.

The distinctness of the options for buyers, which produce different revenues for Lexmark, is not just a matter of different terms of sale. It also is reflected in a microchip in the cartridges that, among other things, communicates with the printer. For a Return Program cartridge, the chip and printer, by monitoring toner levels, prevent use of a' refilled cartridge. For a Regular cartridge, the toner can be replenished' and the cartridge reused. J.A. 2559-60. “To circumvent this technological measure,” however, “third parties have ‘hacked’ Lexmark’s microchips and created their own' ‘unauthorized replacement’ microchips” that, when installed in a Return Program cartridge, fool the printer into allowing reuse of that cartridge. J.A. 2560. It is undisputed that various companies gather spent cartridges, replace the microchips, refill and “remanufacture” the cartridges, and sell them to resellers like Impression for marketing to consumers for use with Lexmark printers.

Lexmark sells its cartridges in two channels of distribution. It sells directly to end users,'and it sells to “re-sellers” (including wholesalers, dealers, and distributors). Lexmark offers the options of Return Program and Regular cartridges in both channels; the resellers pay less for the Return Program cartridges; and the single-use/no-resale restriction applies to the resale by resellers. J.A. 2564. There is no dispute about the adequacy of notice to resellers as well as end users or the binding nature of the Lexmark-reseller agreements. J.A. 2562-64. When Lex-mark sells its cartridges to end users, that sale is the first sale; when it sells to resellers, that sale is the first sale. When a reseller subsequently sells to end users, that sale is not the first sale.

B

Lexmark sued Impression, among other companies, for infringement under 35 U.S.C. § 271. It alleged that Impression acquires spent cartridges, including some Return Program cartridges that have been altered by chip replacement and toner refilling, then sells them in the United States and, for the foreign-bought ones, imports them into the United States.2 For a large number of patents directly covering the cartridges, Lexmark alleged direct infringement under § 271(a). For a few patents that only the end user directly infringes, Lexmark alleged that Impression is liable for contributory infringement under § 271(c). The operative complaint states the infringement allegations in a *729single count (Count I), covering past arid continuing activity.

More specifically, the infringement allegations are limited to two groups of cartridges. One group consists of Return Program cartridges that Lexmark sold in the United States under the restriction denying authority for resale and reuse. As it later made clear, Lexmark did not allege infringement by Impression’s, actions involving Regular cartridges Lex-mark had first sold domestically. J.A. 1895-97, 2557. The second group consists of all cartridges that Lexmark sold abroad, including Return Program and Regular cartridges. It is. undisputed that Lexmark never granted anyone permission to import those cartridges into, or sell or use them in, the United States.

C

The litigation progressed to the point at which no defendant remained except Impression, and only the single count of infringement remained against Impression. Impression came to agree that the patents covered the cartridges it was importing and selling, and it did not dispute the validity or enforceability of the patents. -It contested liability for infringement on just one ground, namely, that Lexmark had exhausted its U.S. patent rights in the cartridges by its initial sales of them.

Three defining aspects of Impression’s contention to the district court, and presentation to us, are worth noting here, because they narrow our focus. First, we discuss only Lexmark’s sales to end users (and the resales and reuses deriving from those sales), because neither party has made an argument for distinguishing Lex-mark’s sales to resellers. ¡Second, we take as a premise that both the first purchaser and Impression as a re-purchaser had adequate-notice of the single-use/no-resale restriction before they made their purchases; the adequacy of that notice is unchallenged. Thus, we do not have before us the questions that would arise, whether under principles governing bona fide purchasers or otherwise, if a downstream re-purchaser acquired a patented article with less than actual -knowledge of such a restriction. Third, Impression has not contended that the particular restriction at issue gives rise to a patent-misuse defense, constitutes an antitrust violation,' or exceeds the scope of the Patent Act’s express grant of exclusive rights over patented articles, 35 U.S.C. §§ 154, 271. Rather, Impression contends that, although there is no other illegality or breach of statutory limits identified, the single-usd/no-resale restriction is to be disregarded for exhaustion purposes. According to Impression, it has the authority to resell despite the known denial' of such’authority-by Lex-mark for the Return Program cartridges.

Impression presented its exhaustion der fense by filing motions,to dismiss the infringement count, one motion for each of the two groups of cartridges at issue.' For each motion, Impression ’did not contest that, under this court’s governing law, its exhaustion defense must fail: Mallinckrodt for the cartridges initially sold in the United States, Jazz Photo for the cartridges initially sold abroad. But it argued that the Supreme Court’s more recent decisions had made Mallinckrodt and Jazz Photo no longer good law. In a pair of opinions issued the same day, the district court agreed with Impression about Mallinckrodt but disagreed about Jazz Photo.

1

. The district court granted Impression’s motion to dismiss Lexmark’s claim of infringement involving the single-use cartridges Lexmark had first sold in the United States. Lexmark Int’l, Inc. v. Ink Techs. Printer Supplies, LLC, No. 1:10-*730CV-564, 2014 WL 1276133 (S.D.Ohio Mar. 27, 2014) (Domestic Sale Opinion), modified at J.A. 34-35 based on a joint stipulation of the.parties, J.A. 2554-66. Like Impression, the court recognized that there is no exhaustion here under this court’s decision in Mallinckrodt, which rejected an, exhaustion defense in circumstances similar to those presented here— namely, where a patentee sold a patented article subject to an otherwise-unobjectionable single-use restriction. Id. at *4, *6. And. the court recognized this court’s post-Mallinckrodt decisions as reiterating that a “ ‘conditional sale’ ” of that type does not cause exhaustion of the patentee’s preserved rights in the article. Id. at *4, *6 (quoting Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318, 1328 (Fed.Cir. 2010) (en banc)).

In nevertheless finding exhaustion here, the district court examined a number of Supreme Court decisions on patent exhaustion. It noted the Court’s explanation in Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549-50, 14 L.Ed. 532 (1853), that a patentee’s grant of a license to another to make and sell a patented article is not the same thing as the. patentee’s sale of the article itself. Domestic Sale Opinion, 2014 WL 1276133, at *3. It noted, too, tfie Court’s rejection of an exhaustion defense in General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175, 58 S.Ct. 849, 82 L.Ed. 1273, opinion on rehearing at 305 U.S. 124, 59 S.Ct. 116, 83 L.Ed. 81 (1938), which held that a buyer of a patented article infringéd when it used the article in a way forbidden by a known use restriction, having bought the article from a manufacturer licensed by the pat-entee to make and sell the article only to buyers who complied with the use restriction. Domestic Sale Opinion, 2014 WL 1276133, at *3. The district court also noted that the Supreme Court in Quanta found exhaustion where “the Supreme Court determined that the agreements [at issue] broadly authorized Intel [the seller] to sell the licensed products without restrictions or conditions.” Id. at *5 (emphasis added).

Despite that recognition of what Quanta involved; the district court concluded “that Quanta overruled Mallinckrodt sub silentio.” Id. at *5, *6. Although Return Program cartridges were sold under post-sale restrictions on reuse and resale, the district. court held that “those post-sale use restrictions do not prevent patent rights from being exhausted given that the initial sales were authorizéd and unrestricted.” Id. The court thus dismissed the infringement claim regarding Impression’s actions involving Return Prógram cartridges Lexmark had sold in the United States. Id. at *7.

2

As to • cartridges Lexmark had sold abroad, the court held that exhaustion did not .apply, i.e„ did not render Impression’s imports and domestic resales of those cartridges. non-infringing. Lexmark Int’l, Inc. v. Ink Techs. Printer Supplies, LLC, 9 F.Supp.3d 830 (S.D.Ohio 2014) (Foreign Sale Opinion). The court recognized, and Impression did. not. dispute, that “under Jazz Photo, an initial authorized sale of a patented product outside of the United States would not exhaust the patent rights of the patent holder.” Id. at 833. It then examined the Supreme Court’s decision in Kirtsaeng and rejected impression’s contention that Kirtsaeng “overturns the Federal Circuits decision in Jazz Photo, 264 F.3d 1094, such that Lexmark’s patent rights were exhausted upon the first authorized sale abroad.” Foreign Sale Opinion, 9 F.Supp.3d at 834 (footnote omitted).

The court stated that “[t]he Supreme Court’s decision was rooted in interpreta*731tion of a statutory provision of copyright law,” namely, 17 U.S.C. § 109(a). Foreign Sale Opinion, 9 F.Supp.3d at 833. The district court noted the absence from Kirtsaeng of any discussion of exhaustion in the patent field and the Supreme Court’s longstanding recognition that copyright law and patent law are not interchangeable. Id. at 835 (citing Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 346, 28 S.Ct. 722, 52 L.Ed. 1086 (1908)). It added.that Kirt-saeng “is rooted in statutory and -legislative interpretation of section 109(a) of the Copyright Act,” but “[njoticeably absent from patent law is a codification of the exhaustion doctrine,” concluding: . “the core statutory text that weighed in favor .-of a non-geographical interpretation is nonexistent in the context of patent law.” Id. The Patent Act, the . court concluded, calls for its own analysis of “context, history and practical considerations.” Id. at 836.

For those reasons, while recognizing that this court might reconsider Jazz Photo in light of Kirtsaeng, the district court held that Jazz Photo remains good law. Id. at 837-38. The court therefore denied Impression’s motion to dismiss Lexmark’s claim of infringement involving the Foreign-Sold Cartridges. Id. at 838.

3

Soon thereafter, with the parties’ agreement, the court entered á “Stipulated Final Judgment.” J.A. 1. The judgment was (a) for-Impression (i.e., Impression does not infringe) as- to the Return Program cartridges whose precursors Lexmark had sold in the United States and (b) for Lexmark (i.e., Impression infringes) as to cartridges whose precursors Lexmark had initially sold abroad. Id. The- parties agree that the judgment is final under 28 U.S.C. § 1295(a)(1), even as to cartridges ‘found to infringe.

. In agreeing to the final judgment of infringement as to the foreign-sold cartridges, which remained an open issue after the Rule 12(b)(6) rulings, Impression reasonably construed the - district court’s Jazz Photo ruling to foreclose its exhaustion defense,-even though all the district court had done was to deny Impression’s request for judgment in its favor based on that defense. In particular, the district court’s rationale, as to the unavailability of exhaustion did not depend on the facts in the record that Lexmark identifies as suggesting the “regional’.’ character of its foreign-sold cartridges, facts that .therefore went unexplored in the district court. And, notably, when Impression agreed to a judgment of infringement as to foreign-sold cartridges, it did not preserve an implied-license defense, even though the Supreme Court made clear , .in Quanta the distinctness, .of implied-license and exhaustion defenses. 553 U.S. at 637, 128 S.Ct. 2109.

D

Impression appealed and Lexmark cross-appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(1). The parties submitted briefs ...and presented oral argument to a panel of this court, focused on whether Quanta had stripped Mallinckrodt of its controlling force and whether Kirtsaeng had stripped Jazz Photo of its controlling force.

Shortly after oral argument, this court sua sponte took the case en banc. Lexmark Int’l, Inc. v. Impression Prods., Inc., 785 F.3d 565 (Fed.Cir.2015). We directed the parties to address the following issues:

(a) The case involves certain sales, -made abroad, of articles patented in the United States. In light of Kirtsaeng v. John Wiley & Sons, Inc., 133 S.Ct. 1351 (2013), should this court overrule Jazz Photo Corp. v. International Trade *732Commission, 264 F.3d 1094 (Fed.Cir. 2001), to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion[?]

(b) The case involves (i) sales of patented articles to end users under a restriction that' they use the articles once and then return them and (ii) sales of the same patented articles to resellers under á restriction that resales take place under the single-use-and-retum restriction: Do any of those sales give rise to patent exhaustion? In light of Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 128 S.Ct. 2109 (2008), should this court overrule Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed.Cir.1992), to the extent it ruled that a sale of a patented article, when the sale-is made under a restriction that is otherwise lawful and within the scope" of the patent grant, does not give rise to patent exhaustion?

Id. at 566.

Discussion

I

The Patent Act’s language defines the framework within which the two exhaustion questions arise. In 1952, based on pre-existing uneodified understandings, Congress set forth a statutory prescription of what constitutes patent “infringement.” See Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 483-84, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964) (Aro II); Aro I, 365 U.S. at 341-42 & n. 8, 81 S.Ct. 599. In its current form, which includes a bar on importation and offers to sell added by a 1994 enactment, § 271(a) states that, unless another provision of the Act provides otherwise, whoever “without authority” during the term of a patent commits certain acts—“makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention”—“infringes the patent.” 35 U.S.C. § 271(a).

Section 271(a) connects “make,” “sell,” “use,” and the other terms with the disjunctive “or,” as does the related provision granting the patentee various rights to exclude others from the same activities, id. § 154(a). Congress has' thus prescribed that whoever, “without authority,” does any one of the listed acts—“the making, using, offering to sell, selling, or importing of a patented invention,” Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 131 S.Ct. 2060, 2065, 179 L.Ed.2d 1167 (2011) (emphasis added)—is an infringer. See 5 Donald S. Chisum, Chisum on Patents § 16.01 (2015) (“The exclusive rights are disjunctive: one may infringe by (1) making without selling or using, (2) using without making or selling or (3) selling without making or using.”) (footnote omitted); William C. Robinson, The Law of Patents §§ 903-906 (1890). The government observes: “Nothing in the text of the Patent Act expressly prevents a patentee from demanding compensation from each downstream user or reseller of an article embodying his invention.” U.S. Br. 5.

Section 271(a)’s language embodies an understanding of “infringement” that was long recognized even before Congress enacted § 271 as part of the 1952 recodification of the patent laws. The pre-1952 statute included a right-to-exelude provision comparable to § 154, which, in language that varied over time, gave the patentee a right to exclude others (not a right to practice the invention). See 35 U.S.C. § 40 (1946); Rev. Stat. § 4884; Bauer & Cie. v. O’Donnell, 229 U.S. 1, 9-10, 33 S.Ct. 616, 57 L.Ed. 1041 (1913); 5 Chisum § 16.02[1]. But while the pre-1952 statute provided for actions for “infringement,” e.g., 35 U.S.C. §§ 67, 70 (1948); Rev. Stat. §§ 4919, 4921, there was no provision pre*733scribing what constitutes infringement. Nevertheless, the courts consistently understood infringement' to mean what § 271 came to say—committing the identified acts without authority (synonymously, without consent or permission): “The infringement of a patent, being the invasion of this exclusive right, therefore consists in the manufacture, usé, or sale of the invention protected by the patent within the area and time described in the patent, by any person not duly authorized to do so by the patentee.” Robinson, § 890, at 43-44 (emphasis added); see 3 Anthony William Deller, Walker on Patents § 450, at 1681 (1937) (“An infringement is the unauthorized making or using or selling of the patented invention.”).3 Thus, the 1952 Act’s “without authority” language simply codifies an authority requirement long recognized to- be the meaning of “infringement” of the enumerated rights to exclude. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 26-27, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (§ 271(a) left direct-infringement law intact); Aro II, 377 U.S. at 483, 84 S.Ct. 1526; Aro I, 365 U.S. at 342, 81 S.Ct. 599; Giles S. Rich, Infringement Under Section 271 of the Patent Act of 1952, 21 Geo. Wash. L.Rev. 521, 537 (1953).

The requirement of “authority” in order to avoid infringement, in its natural meaning, refers to a grant of permission. Logically, permission -might come from Congress, whether outside the Patent Act or within the Patent Act itself, as reflected in § 271(a)’s “[e]xcept as otherwise provided in [the Patent Act]” language, which explicitly, bows to other contrary sections of the Patent Act. But it is undisputed that no other statutory provision applies in this case. See U.S. Br. 5; compare 35 U.S.C. § 262 (each joint owner of a patent may engage in making, using, selling, offering to sell, and importing, without authority from other owners). Nothing in the Act supersedes the § 271 requirement of authority from the patentee before a person in Impression’s position may engage in the itemized acts without infringing.

In this respect, the Patent Act differs from the Copyright Act. In the copyright statute, Congress included a provision giving a right of sale to certain article owners, 17 U.S.C. § 109(a), and made the infringement, importation, and exclusive-rights provisions all subservient to that express guarantee.4 The Patent Aet does not con*734tain a congressionally prescribed exhaustion rule, let alone a provision that makes the express definition of infringement and rights to exclude (both of which now encompass importation) subservient to any congressionally expressed exhaustion rule.5

In the Patent Act, then, as relevant here, it is a conferral of “authority” by the patentee that is needed in order for the actions listed in § 271(a) not to constitute infringement. As the government says, noting the parallelism of § 271(a) and the § 154(a) grant of rights to exclude, what § 271(a) meáns is that “[wjhoever does any of these acts ‘without authority’ from the patentee infringes the patent.” U.S. Br. 1 (emphasis added).' In brief: § 271(a) by its terms requires that whoever engages in the enumerated acts receive permission from the patentee (directly or indirectly) for the acts being performed, which otherwise áre infringing; and nothing in § 271(a) constrains the patentee’s choices about whom to grant the required authority, if anyone, or about which acts (of manufacture, use, sale, etc.) to authorize, if any.

Congress defines the existence and scope of patent rights. See, e.g., Octane Fitness, LLC v. ICON Health & Fitness, Inc., — U.S. —, 134 S.Ct. 1749, 1755-56, 188 L.Ed.2d 816 (2014); Crown Die & Tool Co., 261 U.S. at 40, 43 S.Ct. 254; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 423, 28 S.Ct. 748, 52 L.Ed. 1122 (1908). Unless Congress has directed the courts to fashion governing rules in a particular statutory context- (as in, e.g., the Sherman Act), “once Congress addresses- a subject, even a subject previously governed by federal common law, the justification for lawmaking by-the federal courts is greatly diminished. Thereafter, the task of the federal courts is to interpret and apply statutory law, not to create common law.” Northwest Airlines, Inc. v. Transp. Workers Union of Am., 451 U.S. 77, 95 n. 34, 101 S.Ct. 1571, 67 L.Ed.2d 750 (1981); see City of Milwaukee v. Illinois, 451 U.S. 304, 315, 101 S.Ct. 1784, 68 L.Ed.2d 114 (1981) (“Our commitment to the separation of powers is too fundamental to continue to rely on federal common law by judicially decreeing what accords with common sense and the public weal when Congress has addressed the problem”) (internal quotation marks omitted); Am. Elec. Power Co. v. Connecticut, 564 U.S. 410, 131 S.Ct. 2527, 2537, 180 L.Ed.2d 435 (2011).

If ordinary congressional supremacy is to be respected, exhaustion doctrine in the Patent Act must'be understood as an interpretation of § 271(a)’s “without authority” language. And so it has been understood: some sales confer authority on the purchaser to take certain actions—such as selling or using the purchased article in the United States or importing it into the United States—that would otherwise be infringing acts. See 5 Chisum § 16.03[2][a], at 16-362.8; U.S. Br. 1 (tying exhaustion to “authority” language of § 271(a)). We decide here (a) whether a sale, even though accompanied by a clearly communicated and otherwise-lawful denial of such authority, nonetheless has the legal effect of conferring such authority and (b) whether a foreign sale has the legal effect of conferring such authority where (as we must assume at present in this case) neither a grant nor a reservation of § 271(a) *735rights was communicated to the purchaser before the foreign sale.6

II

The Mallinckrodt issue has been framed for us in clear terms. Suppose that Lex-mark had granted another firm a nonexclusive license to make and sell Return Program cartridges. It is undisputed and clear under Supreme Court- precedent— most prominently, the 1938 decision in General Talking Pictures—that Lexmark would not have exhausted its patent rights in those cartridges, upon the manufacturing licensee’s sale (the first sale), if a buyer with knowledge of the restrictions resold or reused them in violation of the restrictions. Impression and the government contend that a different result is required—that Lexmark automatically lost its patent rights—simply because Lex-mark sold the Return Program cartridges itself, subject to the same communicated restriction, rather than having left, the manufacture and sale to others under license. See U.S. Br. 7, 8, 10, 11 (case turns on distinction between patentee sale and non-patentee licensee sale). (Impression has left the en banc briefing on this issue largely to the government.)

.We conclude otherwise, as we did in Mallinckrodt and subsequent decisions. A sale made under a clearly communicated, otherwise-lawful restriction as to post-sale use or resale does not confer on the buyer and a subsequent purchaser the “authority” to engage in the use or resale that the restriction precludes. And there is no sound reason, and no Supreme Court precedent, requiring a distinction that gives less control to a practicing-entity patentee that makes and sells its own product than to a non-practicing-entity patentee that licenses others to make and sell the product.

A

Mallinckrodt involved a patentee’s sale of its medical device to hóspitáls, subject to a “single use only” restriction. The device consisted of a nebulizer and associated components for délivéring to a pátient, for diagnosis or treatment of lung diseases, a mist of