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Patent Exhaustion

(409 Ratings)

Produced on: December 13, 2016

Course Format On Demand Audio

Taught by


Course Description

Time 60 minutes
Difficulty Beginner

The exhaustion presentation outlines the two primary issues in Lexmark v. Impression, namely: 1) can a U.S. patent be exhausted through a sale of a product outside the U.S.; and 2) can a U.S. patent be exhausted through a restricted sale of a product within the U.S. Here, attorney Steven Rubin discusses the Lexmark procedural history, provides a thorough analysis of exhaustion, and reviews the basic exhaustion concept utilizing cases dating back to the 1800s (and even some English writers from the 1600s). He then provides an overview of the landmark cases that discuss each of the two primary issues and transcends into copyright law, because of a recent Supreme Court case holding that a sale of a book outside the United States exhausted the copyright rights to that book in the United States. Finally, he reviews the arguments in each of the parties briefs before the en banc Federal Circuit and provides summary of the decision and recommendations on how to move forward.

Learning Objectives:

  1. Discuss the primary issues in Lexmark v. Impression
  2. Understand the concept of exhaustion
  3. Identify best practices and recommendations on how to move forward post-Lexmark


Steven S. Rubin

Moritt Hock & Hamroff LLP

Steven Rubin is a Partner with the firm where he Chairs the Patent Practice Group and Co-Chairs its Cybersecurity Practice Group.

Mr. Rubin has 15 years of experience in consulting clients on patent related matters. He advises clients throughout all phases of a patent’s life from conception by an inventor to enforcement. He drafts and prosecutes patent applications and has managed large international patent portfolios. In addition, Mr. Rubin also identifies potential patent infringement assertions and potential cross-licensing opportunities and provides infringement opinions as needed. He represents clients in patent enforcement and litigation matters domestically and internationally and reviews patent portfolios and pending patent litigations in relation to corporate mergers, acquisitions and investments. He also represents companies of all sizes from start-ups to multi-national corporations. 

In the cybersecurity space, Mr. Rubin relies on his technology background in counseling clients and creating written information security plans (WISPs). The WISP may be used by companies to mitigate the risk of, and potentially limit exposure from, a data breach. Mr. Rubin also serves as part of a multi-disciplinary team that can be called into action when a company is sued for actions associated with a data breach.

Mr. Rubin focuses his practice on technology relating to electronics and computer science and has worked in diverse fields such as software; multi-core architecture; augmented reality; optical communication; information processing; image processing; security systems; video conferencing; network based technologies, including cloud computing; mobile applications; search engines; military defense systems; physics; material science; encryption; chemical engineering; nanotechnology; medical devices; microlithography; RF-ID; fabrication and production of semiconductor devices; computer and network architecture and monitoring; circuits; coding/decoding, processing and transmission of signals; antennas; cell phone and pager technology; printer and display technology including LCD control; transmission, compression, synchronization, processing, and display of television signals; optical communications and lens technologies; mechanical devices; and lighting circuitry.

As a recognized leader in his field, Mr. Rubin speaks and publishes extensively on various issues and topics pertaining to patent law and cybersecurity law. He has been quoted in IP Law & Business, Forbes Magazine, Information Week, World Intellectual Property Law Review,,, TechNewsWorld, Linuxinsider, EE Times,, Information Display Magazine, Newsday and Long Island Business News, and in December 2012, he appeared as a legal analyst on PBS's Nightly Business Report (NBR) "Profiting from Patents".

In addition to his legal career, Mr. Rubin mentors law students at Hofstra University School of Law. He has also taught intellectual property law at Stony Brook University, as well as patent law at Brooklyn Law School, Fordham University School of Law, Stony Brook University and Farmingdale State College.


William B.

Excellent presentation.

Dena R.

Enjoyable content packed enjoyable dry humor - request more from this presenter

Nicholas Lee S.

Great speaker.


The presentation was comprehensive and concise. It covered an array of issues and was clear about all of them.

Stephen E.

Good, crisp, brutal explanations.

James B.

Greatt research and presentation of case law.

Gregory S.

I enjoyed the speaker's dry humor

Philippe F.

Interesting stuff.

Andrew D.

Great course

Craig B.

Good class, Mr. Hochman was hysterical with his jokes and anecdotes....he should play the Borscht Belt in the Catskills

Michael V.

good overview


Really outstanding -- fascinating area that attorneys should have some sense of how it works. Great case dissection.

Robert B.

Great presentation! Really enjoyed it!

James T.

Very good

Zachary K.

Presenter had good sense of humor.

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