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