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Library: Impacting License Law Practice

If you weren’t exhausted before, you will be now

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 ...

Is your agreement structure too complex? Simple is better …most of the time

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 ...

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 ...

License Negotiations Breaking Down? You've Got Homework

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 ...

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 ...

The Government is inhuman

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 ...

The hidden risk of joint research and other agreements

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 ...

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 ...