General Business Civil Remedies Intellectual Property

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Everything Old is New Again: Post-Expiration Patent Royalties are a Bad Idea!

On Monday, the United States Supreme Court upheld the longstanding case law that prohibits a patent owner from receiving royalties after a patent has expired. In Kimble v. Marvel Entertainment, LLC (June 22, 2015) 2015 U.S....more

How a Trade Secret Could Have Saved a Running Royalty From a Nearly Invincible Law

In Kimble v. Marvel Entertainment, LLC, just handed down June 22, 2015, the Supreme Court reaffirmed the 50 year old holding of Brulotte v. Thys Co., 379 U. S. 29 (1964), that patent royalties cannot extend beyond the...more

High Court Upholds Ban On Post-Expiration Patent Royalties While Recommending Loopholes

Background - On Monday, the U.S. Supreme Court left intact a 50-year-old rule prohibiting royalties for post-expiration use of a patent. In Kimble v. Marvel Entertainment, LLC, No. 13-720 litigation arose from Marvel’s...more

Litigation Alert: Even Spider-Man Can't Defeat Ban on Post-Patent Expiration Royalties

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” 379 U.S. 29, 32 (1964). On June...more

Supreme Court Keeps Spider-Man Maintaining The Status Quo - Royalties End When The Patent Expires

On June 22, 2015, the United States Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, 576 U. S. ____ upholding a long-standing 50-year rule from Brulotte v. Thys Co., 379 U.S. 29 (1964) that prevents...more

The Finite Life of a Patent Upheld: No Royalties After Expiration

The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more

"The Fracturing of Global FRAND Patent Licensing"

Standard essential patent (SEP) owners have long licensed their patent portfolios, including both SEPs and non-SEPs, on a global basis. But recent divergence, including in China and other jurisdictions, regarding what royalty...more

Maintaining Trade Secret Confidentiality in Litigation

Early Monday morning you learn that Jane, your former employee, has stolen your company’s confidential information and her new employer is using it. You call your lawyer and tell her that you want to put Jane in jail. Your...more

Practice Considerations Post Kimble v. Marvel

The U.S. Supreme Court’s recent decision in Kimble et al. v. Marvel Entertainment, LLC, rejuvenates a 50-year old rule addressing patent royalties, bringing it to the forefront of patent and licensing practice. On June 22,...more

Getting Tangled in the Web of a Hybrid Royalty Clause Part II: Supreme Court Re-affirms Brulotte Decision

In July of 2013, I wrote a blog post about the Ninth Circuit Court of Appeal’s decision in Kimble v. Marvel Entertainment LLC and its effect upon royalty provisions in hybrid IP license agreements. (...) By “hybrid” I am...more

License Dispute Is Remanded To Court Of Chancery

Plaintiffs seek a TRO to prevent defendant from advancing a suit in the Intellectual Property Court of Taiwan. The parties here are parties to a license with a forum selection clause whereby the parties “irrevocably consent...more

ZTE Enjoined From Further Breaching NDA Entered For Settlement Discussions (Vringo V. ZTE)

Judge Kaplan of S.D. New York recently issued a preliminary injunction to enjoin ZTE from further disclosing information subject to a non-disclosure agreement (NDA) that ZTE had entered with Vringo to potentially settle...more

Pre-Arbitration Injunction May Only Preserve Status Quo - Benihana, Inc. v. Benihana of Tokyo, LLC

In the context of a dispute surrounding a breach of a trademark license agreement that provided for arbitration of certain disputes, the U.S. Court of Appeals for the Second Circuit concluded that it was inappropriate for a...more

Federal Trade Commission Continues March “to Set a Standard for the Industry” with Cephalon Settlement

On May 28, the Federal Trade Commission (“FTC”) announced it had reached a $1.2 billion settlement with Teva Pharmaceuticals, which acquired Cephalon in 2012, over reverse payment for its narcolepsy drug, Provigil. The...more

FTC’s $1.2 Billion Disgorgement Settlement With Cephalon: Heightened Scrutiny of Hatch-Waxman Settlements

On May 28, 2015, the Federal Trade Commission (FTC) announced the settlement of its 2008 lawsuit against Cephalon, Inc. (now owned by Teva Pharmaceutical Industries, Ltd.), which alleged that Cephalon had made “reverse...more

Teva Agrees to Pay $1.2 Billion in FTC’s Pay-For-Delay Suit Against Cephalon

Recently, the FTC announced that it reached a settlement in its pay-for-delay lawsuit, FTC v. Cephalon Inc. in the U.S. District Court for the Eastern District of Pennsylvania, with Teva Pharmaceuticals Industries, Ltd.,...more

Ryan v. Editions Limited West, Inc. - USCA, Ninth Cir., May 19, 2015

Ninth Circuit holds Copyright Act does not preclude enforcement of contractual attorneys’ fee provision in copyright-based litigation. Artist Victoria Ryan sued Editions Limited West, Inc. (ELW), a publisher of her...more

April Court Decision Round-Up

Note: Beginning this month, IP Law Tracker will highlight significant intellectual property decisions from the U.S. Court of Appeals for the Sixth Circuit and the U.S. District Courts for the Eastern District of Michigan and...more

Sixth Circuit Affirms Sanctions for Frivolous and Retaliatory False Claims Act Suit

On May 1, 2015, in United States ex rel. Jacobs v. Lambda Res., Inc., No. 14-3705, 2015 WL 1948247 (6th Cir. May 1, 2015), the Sixth Circuit Court of Appeals affirmed the lower court’s award of sanctions against a relator and...more

Court, Applying Pennsylvania And California Law, Declines To Enjoin Alleged Violation Of Worldwide Non-Compete

A non-competition covenant prohibited employees of Adhesives Research (AR), a company based in Pennsylvania, from performing services for a competitor of AR anywhere in the world for two years after termination. Newsom, AR’s...more

Another Frivolous Trade Secret Case: Court Finds Bad Faith in Cypress v. Maxim

Cypress Semiconductor Corporation and Maxim Integrated Products are two big Silicon Valley tech companies, both with an interest in touchscreen technologies. In February 2011, Maxim engaged a recruiter named Zion Mushel to...more

Is the FRAND Regime Due for an Overhaul?

In today’s technology-heavy world, technical interoperability standards are quite common. Because those standards are often patented, patent owners may have the ability to extract a monopoly price and some argue those owners...more

Insolvency: What Every Technology Company Needs to Know About Claims Against Bankrupt Customers And Business Partners

Every year, otherwise successful technology companies lose untold sums of money and valuable intellectual property rights because they do not act when a customer or business partner files for bankruptcy protection. Far less...more

Licensees Not Required to Do Due Diligence Where Inventor Falsely Claimed Exclusive Ownership - Yazdianpour v. Safeblood...

Addressing the grant of summary judgment dismissing a fraud claim where the licensee failed to check the U.S. Patent and Trademark Office (PTO) website regarding rumors of the inventor’s previous dealings with another...more

No Acquiescence Defense in Fifth Circuit Without Significant Investment in Reliance - Pennzoil-Quaker State Co. v. Miller Oil &...

Clarifying that undue prejudice is a distinct requirement of the acquiescence defense, the U.S. Court of Appeals for the Fifth Circuit reversed the district court’s finding of acquiescence where the defendants failed to show...more

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