License Agreements

News & Analysis as of

Federal Circuit Review | July 2015

Nunc Pro Tunc Assignments Insufficient To Confer Retroactive Standing - In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a...more

ECJ rips up Orange Book! New standards in Europe for SEP injunctions

Standards lie at the heart of the digital economy – without standards, we would not have smartphones, tablets and other key parts of modern life. Europe’s highest court recently delivered a judgment in Huawei v. ZTE1...more

The European Court of Justice on Enforcement of FRAND Patents: Huawei v. ZTE

The European Court of Justice (ECJ) rendered its highly anticipated ruling in Huawei v. ZTE on the enforcement of standard essential patents (SEPs) which are subject to a FRAND commitment. SEPs play a significant role in the...more

The European Union’s Highest Court Rules on Standard-Essential Patents, Injunctions and Abuse of Dominance

The long-awaited ruling on the seeking of injunctions in the context of standard-essential patents encumbered by fair, reasonable, and non-discriminatory (FRAND) terms has been delivered by the Court of Justice of the...more

“The Donald” Trumps Condo Buyers by Avoiding Trade-mark Licensor Liability

United States presidential candidate Donald Trump avoided liability for alleged misrepresentations of the attributes of purchased hotel condominium units by a developer that is licensed by one of Mr. Trump’s corporate...more

A Win for Licensees: Royalty Payments Stop at Patent’s Expiration

On June 22, 2015, the U.S. Supreme Court affirmed that if a patent holder’s invention was properly filed and approved by the United States Patent and Trademark Office, then the patent holder is granted a term of twenty (20)...more

EU’s Highest Court Confirms that Seeking an Injunction for SEPs May Constitute an Abuse of a Dominant Position

On July 16, 2015, the EU's highest court, the Court of Justice, rendered its long-awaited ruling on whether seeking an injunction for a standard-essential patent ("SEP") against an alleged patent infringer constitutes an...more

EU Court: Standard Essential Patent Owners May Be Abusing Dominance

On July 16, the European Court of Justice issued a decision stating that standard essential patent (“SEP”) owners that seek injunctions against companies willing to license intellectual property on fair and reasonable terms...more

Court Grants Motion to Dismiss for Lack of Standing Where Plaintiff Merely Alleged That It Had All Substantial Rights to Patent

Verify Smart Corp. ("Verify") filed a patent infringement action against Bank of America, N.A. ("BoA"), alleging infringement of United States Patent No. 8,285,648 ("the '648 Patent"). As part of its complaint, Verify claimed...more

European Union High Court Gives Guidance On Seeking Injunctive Relief On FRAND-Encumbered Seps (Huawei V. ZTE)

Today, a European Union high court issued a ruling that provides guidance on what steps the owner of a FRAND-encumbered patent that may be essential to a standard should take before seeking injunctive relief. The court also...more

Crossing the Line: Don't Let Business Clients Become Accidental Franchisors

Too often, expansion-minded business owners choose to offer trademarked products or services through purported licensing agreements or distribution or dealership arrangements only to discover, well into the game, that what...more

U.S. Supreme Court Preserves 50-Year-Old Rule Barring Post-Patent Royalties

On Monday, June 22, 2015, the U.S. Supreme Court issued a 6-3 decision in Kimble v. Marvel Entertainment, declining to reverse longstanding, yet controversial, precedent holding post-patent term royalties to be unlawful per...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

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

State Law Claims Suffer “Awfully Big Adventure”: New York Court Finds Federal Copyright Preemption in Dispute over Peter Pan...

On June 8, 2015, the New York County Supreme Court dismissed with prejudice eight of twelve state law claims brought by a producer seeking damages for the purportedly unauthorized use of his music in a world-wide production...more

Supreme Court Declines To Overrule Brulotte Rule: Post-Expiration Patent Royalties Remain Unlawful

Background - Fifty years ago, the U.S. Supreme Court ruled that a patent license agreement that requires the licensee to pay royalties after the expiration of the licensed patent is unlawful per se, because such payments...more

Refusing to engage in alternative dispute resolution becomes harder to justify

The English courts are getting tougher on parties that refuse to participate in alternative dispute resolution (ADR), the most common form of which is mediation. Since 2004, an unreasonable refusal to participate in ADR...more

Amendments to Japan METI Guidelines on Electronic Commerce and Information Property Trading

The Ministry of Economy, Trade and Industry of Japan (METI) recently revised the Interpretative Guidelines on Electronic Commerce and Information Property Trading (Guidelines), which apply to all online business operations in...more

Federal Circuit Patent Updates - June 2015

Apls South, LLC v. Ohio Willow Wood Co. (No. 2013-1452, -1488, 2014-1147, -1426, 6/5/15) (Lourie, Moore, Chen) - Chen, J. Vacating judgment and remanding with instructions to dismiss due to lack of standing. “Precedent...more

Federal Circuit Finds Nunc Pro Tunc Agreement Does Not Confer Standing

The tenuous nature of an exclusive licensee’s standing to enforce a patent was something I learned early in my legal career, when I was a judicial clerk at the Federal Circuit. In Alps South LLC v. Ohio Willow Wood Co., the...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

Broadcast Music, Inc. v. Pandora Media, Inc. - USDC, S.D. New York, May 28, 2015

After five-week bench trial, district court holds BMI's proposed license fee of 2.5 percent of Pandora's gross revenue was reasonable, using Pandora's 2013 direct licenses with Sony/ATV and Universal Music Publishing as...more

Second Circuit Partially Reverses District Court Preliminary Injunction Order In Aid Of Arbitration

Defendant-appellant Benihana of Tokyo, LLC appealed a 2014 order of the United States District Court for the Southern District of New York granting the application of plaintiff-appellee Benihana, Inc. for a preliminary...more

VC’s running scared – Hooli is suing Pied Piper (Episodes 9 and 10) continued

Last post I mused that had Richard taken certain steps in the first season of Silicon Valley, he might now have ammunition to use against Hooli’s lawsuit. What am I talking about? To very crudely recap what happened last...more

Second Circuit Affirms Victory for Pandora On Music Streaming Rights

On May 6, 2015, in Pandora Media, Inc. v. American Society of Composers, Authors, and Publishers, the Second Circuit held that composers and music publishers cannot partially withdraw from the American Society of Composers,...more

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