Patent Royalties

News & Analysis as of

Energy Management Patent Triggers a Covered Business Method Review

Faced with a patent threat, renewable energy and climate change companies may have a new defense option – a Covered Business Method (CBM) proceeding. Ushered in less than 2 years ago as part of comprehensive patent reform...more

The Year Ahead in Patent Law - 2015

With the advent of the America Invents Act (AIA), public perception of frivolous patent litigation, frequently surrounding cases filed by non-practicing entities (NPEs), has received increasing legislative attention. Although...more

It’s a Mad, Mad, Mad, FRAND World

Early Determinations of Fair, Reasonable, and Non-Discriminatory License Payments Have Been Anything but Consistent - When an invention claimed in a patent is essential to complying with a technical operating standard...more

Back to the Future—Supreme Court to Review Rule On Post-Expiration Patent Royalties

Kimble v. Marvel Enterprises - The U.S. Court of Appeals for the Ninth Circuit, in affirming a district court decision that toy maker Marvel was not required to make payments after the expiration of a patent,...more

Ericsson, Inc. v. D-Link Sys., Inc. Guidance on Determining Damages for Standard Essential Patents

Patents claiming inventions which must be used to comply with certain technical standards (for example, the Wi-Fi standard or standards for 3G) are referred to as standards-essential patents or “SEPs”. There has,...more

Not a utility patent, but a patent utility?

In a recent interview with The Washington Post, Jay Walker, founder of Priceline.com, has proposed a kind of neutral private-sector utility for the licensing of patents. He argues that “We have spent trillions of dollars...more

IP Newsletter - January 2015

In This Issue: - Castle Defense: Federal Circuit Reinforces Patent Damages Gate in VirnetX - Standards Patent Licensing: Always Apportionment, Sometimes Stacking - Supreme Court to Consider Good-Faith...more

Daubert Challenge to Damage Expert Denied Where Contested Matters Were for Cross-Examination and Not Proper for Exclusion

In this patent infringement action, Apple challenged the opinions of the plaintiff's damage expert on several bases, including the determination of a royalty rate based on the price of third-party applications....more

Supreme Court Corner: Q4 2014

KIMBLE V. MARVEL ENTERPRISES, INC. Patent Licensing - Cert. Pending - Issue: Whether the Supreme Court should overrule Brulotte v. Thys Co., which held “a patentee’s use of a royalty agreement that projects...more

Will the Supreme Court Remove Brulotte’s Shadow Over Patent Licensing?

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Although criticized by scholars, antitrust agencies, and the...more

Supreme Court 2014 Patent Preview

On average, the U.S. Supreme Court historically hears fewer than one patent case each term. For example, in the 14 years between 1982 and 1995, the Court decided only five patent cases. In the seven years between 1995 and...more

Supreme Court to Decide Whether License Agreements May Require Payment of Royalties After Patent Expiration

The U.S. Supreme Court Friday agreed to revisit a longstanding precedent that bars patent owners from collecting royalties after their patents have expired, even if those post-expiration payments represent compensation for...more

Antitrust and Competition Newsletter - December 2014 (Global)

For this month’s Top Stories, we are republishing two very recent Orrick Client Alerts that address an important U.S. appellate decision regarding the extraterritorial application of U.S. antitrust laws and the first U.S....more

U.S. Supreme Court to Review Whether Post-Patent Term Royalty Schemes Lawful

On Friday, December 12, 2014, the U.S. Supreme Court granted certiorari on Kimble v. Marvel Enterprises, Inc., No. 13-720, opening the possibility that the Supreme Court will overturn Brulotte v. Thys Co., 379 U.S. 29 (1964),...more

Federal Circuit Provides Important Guidance in RAND Disputes

On Dec. 4, 2014, the Federal Circuit issued a much-anticipated opinion in Ericsson, Inc. v. D-Link Sys., Inc., Nos. 2013-1625, -1631, -1632, -1633 (Fed. Cir. Dec. 4, 2014). The panel—consisting of Judges Kathleen O'Malley,...more

Actual Negotiations Trump 40-Year Georgia-Pacific Test to Determine Type of Patent Licensing Royalties

The Grigoleit Co. v. Whirlpool Corp. - Addressing a lower court’s reasonable royalty determination that chose not to rely on the Georgia Pacific factors, the U.S. Court of Appeals for the Seventh Circuit recently...more

Federal Circuit Review | October 2014

Inequitable Conduct Ruling Upheld - In AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO., Appeal No. 2013-1061, the Federal Circuit affirmed a finding of inequitable conduct. Calcar asserted patents related to...more

License Definition Trumps Need for Actual Infringement Finding

Cellport Systems, Inc. v. Peiker Acustic GMBH & Co. KG - In a case addressing whether royalties are due under a patent licensing agreement even if the products are not covered by the patents, the U.S. Court of Appeals...more

Edwards and Medtronic to Settle All Patent Litigation; Medtronic to Make over $1 Billion in Payments

According to a press release, Edwards Lifesciences and Medtronic have agreed to settle all outstanding patent litigation between the companies, including cases related to transcatheter heart valves. The press release noted...more

Forward-Publishing Your Patents? Best and Worst Case Scenarios...

Patents are a tool to discourage inventors to keep trade secrets, by trading public disclosure for a limited monopoly. Forward-publishing an application is a deliberate embrace of this philosophy, eliminating even the...more

Top 5 Ediscovery Case Summaries – July 2013: California - Spoliation Sanctions Levied Against Damages Awarded in Rambus Case

SK Hynix Inc. v. Rambus, Inc., 2013 WL 1915865 (N.D. Cal. May 8, 2013). In this complex set of patent-infringement cases, the plaintiffs sought spoliation sanctions against the defendant—who prevailed in the underlying...more

W.L. Gore’s Impact on Pending Maryland Cases and Audits

In a case decided late last month, Comptroller of the Treasury v. Gore Enterprise Holdings, Inc. and Future Value, Inc., Nos. 1696 and 1697 (January 24, 2013), the Maryland Court of Special Appeals held that patent royalties...more

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