  United States Court of Appeals
      for the Federal Circuit
                ______________________

        LEXMARK INTERNATIONAL, INC.,
            Plaintiff-Cross-Appellant

                           v.

          IMPRESSION PRODUCTS, INC.,
               Defendant-Appellant

 QUALITY CARTRIDGES, INC., JOHN DOES, 1-20,
BLUE TRADING LLC, EXPRINT INTERNATIONAL,
    INC., LD PRODUCTS, INC., PRINTRONIC
 CORPORATION, TESEN DEVELOPMENT (HONG
  KONG) CO. LTD., BENIGNO ADEVA AND HIS
                COMPANIES,
                  Defendants

                ______________________

                 2014-1617, 2014-1619
                ______________________

   Appeals from the United States District Court for the
Southern District of Ohio in No. 1:10-cv-00564-MRB,
Judge Michael R. Barrett.
                ______________________

         SUA SPONTE HEARING EN BANC
              ______________________

  Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, and
              HUGHES, Circuit Judges.
2 LEXMARK INTERNATIONAL, INC. v. IMPRESSION PRODUCTS, INC.



PER CURIAM.
                        ORDER
    This case was argued before a panel of three judges on
March 6, 2015. The panel sua sponte requested a poll on
whether to consider this case en banc in the first instance.
A poll was conducted and a majority of the judges who are
in regular active service voted for sua sponte en banc
consideration.
   Accordingly,
   IT IS ORDERED THAT:
    (1) The court sua sponte orders that this case be
heard en banc under 28 U.S.C. § 46 and FED. R. APP. P.
35(a). The court en banc shall consist of all circuit judges
in regular active service who are not recused or disquali-
fied.
    (2) The parties are requested to file new briefs. The
briefs should 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 (2012), should this court overrule Jazz
           Photo Corp. v. International Trade Commission,
           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 a restriction that resales take place un-
           der the single-use-and-return restriction. Do
           any of those sales give rise to patent exhaus-
LEXMARK INTERNATIONAL, INC.IMPRESSION PRODUCTS, INC.      3



          tion? In light of Quanta Computer, Inc. v. LG
          Electronics, Inc., 553 U.S. 617 (2008), should
          this court overrule Mallinckrodt, Inc. v. Medi-
          part, 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 ex-
          haustion?
    (3) This appeal will be heard en banc on the basis of
the additional briefing ordered herein, and oral argument.
An original and thirty copies of new en banc briefs shall
be filed, and two copies of each en banc brief shall be
served on opposing counsel. Impression Products, Inc.’s
en banc brief is due 45 days from the date of this order.
Lexmark International, Inc.’s en banc response brief is
due within 30 days of service of Impression Products,
Inc.’s en banc brief, and the reply brief within 15 days of
service of the response brief. Briefs shall adhere to the
type-volume limitations set forth in Federal Rule of
Appellate Procedure 32 and Federal Circuit Rule 32.
   (4) Briefing should be limited to the issues set forth
above.
     (5) With respect to the Joint Motion for Entry of
Stipulated Order Regarding Supplementations of the
Record (A2554-66) (“stipulation”), it is the court’s under-
standing that any claims to the stipulation’s confidentiali-
ty are waived. See ECF Nos. 76, 78. Therefore, the court
orders that the parties file a copy of the stipulation with
the court within 10 days of this order. The court further
orders that all exhibits referenced in the stipulation be
filed with the court within 10 days. Any redactions to the
exhibits must be in compliance with Federal Circuit Rule
28, and limited in nature. If any part of any of the exhib-
its are marked as confidential, the parties are ordered to
4 LEXMARK INTERNATIONAL, INC. v. IMPRESSION PRODUCTS, INC.



show cause for each redaction, to be filed simultaneously
with the filing of the exhibits.
    (6) The court invites the United States Department of
Justice to file a brief expressing the views of the United
States as amicus curiae. Other briefs of amici curiae will
be entertained, and any such amicus briefs may be filed
without consent and leave of court but otherwise must
comply with Federal Rule of Appellate Procedure 29 and
Federal Circuit Rule 29.
    (7) Oral argument will be held at a time and date to
be announced later.


                                  FOR THE COURT

 April 14, 2015                   /s/ Daniel E. O’Toole
       Date                       Daniel E. O’Toole
                                  Clerk of Court
