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 Advanced Royalty Strategies
Advanced Royalty Strategies

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

 All Good Things Must Come to an End: Kimble v Marvel
All Good Things Must Come to an End: Kimble v Marvel

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
Antitrust Pitfalls Common to Joint Development Agreements

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 ...

 Are you getting submarined by your sublicenses?
Are you getting submarined by your sublicenses?

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 ...

 Avoiding Prior Art Using the Safe Harbor of a Joint Research Agreement
Avoiding Prior Art Using the Safe Harbor of a Joint Research Agreement

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 ...

 Benefits of Copyright Protection
Benefits of Copyright Protection

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 ...

 Case Law Developments Impacting License Law Practice
Case Law Developments Impacting License Law Practice

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)
Covenants not to sue (CN2S)

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 ...

 Frequently Asked Copyright Questions
Frequently Asked Copyright Questions

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 ...

 Frequently Asked Questions About Trademarks
Frequently Asked Questions About Trademarks

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 ...

 Honey, I Shrunk the Patent Rights
Honey, I Shrunk the Patent Rights

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 ...

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

 Introduction to the Patent Exhaustion Doctrine
Introduction to the Patent Exhaustion Doctrine

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, ...

 Joint Development Agreements
Joint Development Agreements

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 Owners who Fight over Ownership and Use of Joint Research.
Joint Owners who Fight over Ownership and Use of Joint Research.

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 ...

 Licensing and Litigation Strategies After MedImmune
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 ...

 Navigating the World of Copyright
Navigating the World of Copyright

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 ...

 Patent and Know-How License For Rustproof Widgets
Patent and Know-How License For Rustproof Widgets

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

 Patent Exhaustion: Outcomes are hard to predict.
Patent Exhaustion: Outcomes are hard to predict.

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 ...

 Pitfalls under the Repair v Reconstruction Doctrine
Pitfalls under the Repair v Reconstruction Doctrine

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 ...

 Pitfalls When Commercializing Products Developed From Joint Research.
Pitfalls When Commercializing Products Developed From Joint Research.

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 ...

 Reasons to Pursue Trademarks
Reasons to Pursue Trademarks

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.

 Recent Significant Copyright Decisions
Recent Significant Copyright Decisions

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 ...

 Recent Significant Trademark Decisions
Recent Significant Trademark Decisions

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 ...

 Settlement Agreements and blocking clauses
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 ...

 Standing room only.
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 ...

 Term Sheet Strategies Helpful to Draft and Negotiate Joint Development Agreements 
Term Sheet Strategies Helpful to Draft and Negotiate Joint Development Agreements 

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 ...

 Term Sheet System 
Term Sheet System 

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 Patent Exhaustion Doctrine is Here to Stay
The Patent Exhaustion Doctrine is Here to Stay

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 ...