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Advanced Strategies for Establishing Royalty Streams Presented to MNLES, Minneapolis, MN June 8, 2010

Kimble v. Marvel Entertainment, LLC, 135 S. Ct. 2401 (2015). Kimble evaluates whether a patent owner can collect any kind of patent royalty (e.g., royalty under a license or royalty for an assignment) for activity occurring after a patent expires. ...

Antitrust pitfalls common to Joint Development Agreements. In the late 1970s, the Justice Department promulgated the famous “nine no-no’s” to be avoided as antitrust pitfalls when licensing patent rights. In that era, many of the no-no’s were per se ...

Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., No. 2018-2400 (Fed. Cir. Oct. 17, 2019). This case presents many important lessons for sublicense strategies. Fraunhofer exclusively licensed Worldspace under patent rights protecting technology to ...

Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734 (2017) Licensing multi-component inventions sourced only in part in the U.S. creates ample risk that a licensee can avoid paying any patent royalty outside the U.S. The Life Techs. decision explains ...

Why is this important? What is it? Outside counsel v. inside counsel. Waiver. Special Topics Download the Presentation

Prior to December 2004, joint research parties faced a serious obstacle against patenting inventions resulting from joint research efforts. Claimed inventions could be rejected as unpatentable during prosecution, or be invalid if issued, over ...

Copyright protection is a fundamental legal concept that offers advantages for creators, artists, authors, and businesses. At Kagan Binder, we are dedicated to helping our clients harness these benefits to safeguard their intellectual property. Here ...

Presented to MNCLE January 31, 2020: Unlike patent infringement cases that funnel into the Federal Circuit on appeal, license appeals are heard in state and federal appeals courts all over the country. The result is that license cases are more ...

Covenants not to sue (“CN2S”) are a licensor exit strategy to get out of an unwanted DJ action brought by a licensee. Typically, the licensee secured DJ jurisdiction and is attacking validity/infringement. The licensor files/offers up a CN2S along ...

IPR cross-examinations v. discovery depositions. Honorable Jimmie V. Reyna Intellectual Property Inn of Court - March 17, 2016. Download the Presentation

Freedom to Operate (FTO) Goal: Avoid infringing valid, enforceable patent rights of the third parties. Download the Presentation

What is copyright, and how does it work? Answer: Copyright is a legal protection that grants creators exclusive rights to their original works of authorship, such as literary, artistic, musical, and software creations. These rights include the ...

These are some of the common questions and answers related to trademark services. However, each client's situation is unique, and specific inquiries may vary based on their needs and circumstances. At Kagan Binder, we are equipped to provide ...

Implied license laws and the exhaustion doctrine crucially impact the drafting and negotiation of patent licenses. This presentation analyzes the case law that interprets these two doctrines. This presentation also provides frameworks for analyzing ...

Not intuitive, Myths v. Truths, Powerful perspective, "Harvest" inventions, Select best for patenting, Super harvesting. Download the Presentation

Impression Products, Inc. v. Lexmark, Intl., Inc., 137 S. Ct. 1523 (2017) Some patent owners sell products in fields in which there is strong demand for used products or the servicing/repair of used products. Patent owners in these fields are ...

U.S. patent law authorizes an inventor to secure patent protection for inventive machines, articles of manufacture, methods, and compositions that are useful. 35 USC 101. Patent protection allows the patentee to exclude others from making, using, ...

Amgen, Inc. v. Amneal Pharmaceuticals LLC, Civ. No. 16-853-MSG (D. Del., September 19, 2019) Amgen shows solid, creative thinking of the good kind by both parties in a very complex dispute involving a settlement agreement with patent license ...

Inspired Development Group v. Inspired Products Group, LLC, No. 18-1616 (Fed. Cir. 2019) This case involved an exclusive patent license dispute. The already strained relationship between the licensor and licensee became even worse after a third ...

Many view joint development agreements as the most complicated type of IP agreement. New developments in statutes and case law are adding to that complexity – causing us even to question and revise the basic practices that have, for decades, guided ...

Joint development research often results in the joint creation of an invention. In the patent world, this makes the creators not just joint inventors, but also joint owners of that invention. The provisions of 35 U.S.C. § 262 expressly state that ...

Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). The Halo decision created a new regime that has made it easier for patent owners to get enhanced damages against accused infringers under 35 USC 284. The Halo decision ...

The 2007 MedImmune decision is significant because the United States Supreme Court in this decision construed and changed the scope of Article III of the United States Constitution. The Court construed Art. III more broadly to make it easier for ...

Kagan Binder is dedicated to protecting your creative vision – your unique work, your artistic expression, and your success. Our Copyright Practice is designed to provide you with comprehensive copyright protection, strategic counsel, and the legal ...

This sample license includes generous annotations to help understand the license content and strategies. Download the Document

The Supreme Court emphasizes the importance of preserving the sanctity of stare decisis to guide judicial decisions. See Kimble v. Marvel Entertainment, LLC, 135 S. Ct. 2401 (2015). Yet, cases in the area of patent exhaustion appear to lose sight of ...

A common business model occurs when patentee sells or even gives away patented equipment to pave the way for lucrative sales of proprietary consumables used in the equipment. Often, patentee intends to make most of its revenues from sales of the ...

Patents are different from other Intellectual Property. Unique characteristics, Good and bad, Valuable, Why have a patent system? Download the Presentation

A myriad of law and fact circumstances create implied licenses. Scholars have commented that the law is a morass of doctrines that overlap and/or conflict.1 Nonetheless, a substantial majority of implied license cases fall into one or more of the ...

The repair v. reconstruction doctrine (RRD) also limits patent scope. You are significantly impacted by the RRD if you sell patented items, such as capital equipment, for which there is a sizeable used equipment or repair markets. You also are ...

Joint development agreements often contain supply terms by which one party agrees to sell products to the other party. Those products might already exist or might exist after some joint development. Supply terms in a joint development relationship ...

Patent Therapies: Prescriptions for Healthy Patents. Key prosecution mistakes you must avoid. Success strategies show winning prosecution principles. Download the Presentation

Trademarks are not just symbols or names. They are invaluable assets with a myriad of benefits for your business. Our team is here to help you harness the full potential of trademarks and realize the value they present.

These cases represent some of the most significant copyright decisions from 2016 to the present, shaping the landscape of copyright law in the United States. Please consult with your attorney for the most up-to-date information and developments in ...

Booking.com B.V. v. United States Patent and Trademark Office (2020): Significance: The U.S. Supreme Court ruled that a generic term, like "booking," could become a protectable trademark when combined with ".com." This decision expanded the scope of ...

Lear v. Adkins revoked licensee estoppel and authorized licensees to challenge validity. MedImmune extended Lear by allowing validity challenges even if the licensee is not in breach. Generally but not always, license clauses that block validity ...

Snapshot 1: Four Major Stars in Every License Agreement. How the Big Four can help you draft and negotiate any license agreement. Download the Presentation

Snapshot 2: Patent License v. Covenant not to Sue. What's the difference? Download the Presentation

Snapshot 3: When winning is losing. Getting rid of a royalty burden can be Licensee's worst move! Download the Presentation

Snapshot 4: A useful model for drafting and negotiating joint development agreements. Download the Presentation

Snapshot 5: The Power of Know How. Know how strategies avoid many agreement pitfalls. Download the Presentation

Snapshop 6: Did a quiet shift in the exhaustion doctrine just make licensed patents stronger? Replacement parts and consumables more protectable? Download the Presentation

Spin Master, Ltd. v. E. Mishan & Sons, Inc., No. 1:2019cv09035 (S.D.N.Y. 2019) Does a licensee have standing to bring an infringement action against an accused infringer, or does the patent owner have to be involved somehow? The provisions of 35 ...

Myth v. truth, Planning scope, Strategic patenting plan, Sample IP harvesting plan. Download the Presentation

Term sheets offer many advantages. They can simplify the negotiation process and make it less expensive to put in place a fully signed joint development agreement. With a term sheet in hand, the parties can hammer out the main concepts without ...

This section of the annotated agreement manual includes a full term sheet system with annotations. The information is referred to as a system, because it is a turnkey program for placing binding and nonbinding terms in the context of a license ...

The Government is inhuman. I’m not paranoid. The Supreme Court says so. Return Mail, Inc. v. Postal Service, 139 S. Ct. 1853 (2019) Is a federal agency such as the U.S. Postal Service a person? And what does this have to do with license practice? It ...

Helsinn Healthcare S. A. v. Teva Pharms. United States, Inc., 139 S. Ct. 628 (2019) This decision addresses the question of whether secret sales trigger the on sale bar under the new Section 102(a)(1) of the AIA. The lesson is that activities under ...

The courts strongly favor the exhaustion doctrine as a defense against patent infringement. There is not even the tiniest hint that courts question the integrity or policies of the defense. Except for a minor retreat taken by the Federal Circuit ...

Alexsam, Inc. v. Mastercard, Inc., No. 1:2015cv02799 (E.D.N.Y. 2019) Litigating parties can be surprisingly creative in creating and defending against causes of action in license disputes. No matter how straightforward the issues appear to be from ...