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
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, ...
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 ...
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 ...
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 ...
Snapshot 3: When winning is losing. Getting rid of a royalty burden can be Licensee's worst move! Download the Presentation
Myth v. truth, Planning scope, Strategic patenting plan, Sample IP harvesting plan. Download the Presentation
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 ...
