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Library: Dispute Resolution

Attorney Client Privilege for Patents

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

Deposition Comparison

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

Is your patent license a ticket into federal court?

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 ...

Licensing and Litigation Strategies After MedImmune

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 ...

Settlement Agreements and blocking clauses

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 3: Winning is Losing

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

Standing room only.

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 ...

Who wears the boxing gloves?

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 ...