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 ...
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 ...
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 ...
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”) 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 ...
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 ...
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 ...
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 ...
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, ...
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 ...
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 ...
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 ...
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 ...
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 ...
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 ...
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 ...
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 ...
