News & Analysis as of

Patents License Agreements

Skadden, Arps, Slate, Meagher & Flom LLP

EU Court of Justice Takes a Firm Stance Against Patent Settlement Agreements

The European Union’s Court of Justice (ECJ) has rendered its two long-awaited judgments in the European Commission’s (EC’s) perindopril case. The 27 June 2024 judgments concern: - The EC’s appeal of the General Court’s...more

Knobbe Martens

Federal Circuit Review | June 2024

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Reliably Determining Reasonable Royalty Rates from Lump Sum Licenses - In Ecofactor, Inc. V. Google LLC, Appeal No. 23-1101, The Federal Circuit held that license agreements containing a lump sum payment “based on” a royalty...more

McDermott Will & Emery

The $X Factor: Demystifying Damages Calculations

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The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to deny a defendant’s motion for a new trial on damages, finding that the plaintiff’s damages expert sufficiently showed that prior license...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2024

EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. June 3, 2024) In the Federal Circuit’s only precedential patent opinion this week, the court addressed issues of infringement and admissibility that arose...more

Knobbe Martens

Reliably Determining Reasonable Royalty Rates From Lump-Sum Licenses

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Summary:  License agreements containing a lump-sum payment “based on” a royalty rate may provide reliable evidence of a reasonable royalty rate for the licensed patent. EcoFactor sued Google for patent infringement over...more

Jones Day

NIH Seeks Comments on Patient Access Plan Requirements in Patent License Agreements

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The Situation: The National Institutes of Health ("NIH") proposed a new policy requiring entities that receive licenses from the NIH to certain taxpayer-funded inventions to submit Access Plans for ensuring broader patient...more

Gray Reed

The Taxman, Technology Litigation and Cavalier Settlement Structures

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Intellectual property (“IP”) is hugely important to businesses. Given that importance, IP owners must occasionally litigate against the unauthorized use of their technology. The costs of such litigation and appurtenant...more

Hutchison PLLC

From Academia to the Marketplace: The Ins and Outs of University Spinout Licenses with Dan O’Korn

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Ever wondered how startups in the pharmaceutical and biotech sectors navigate the maze of university licensing agreements? Join us as we sit down with Dan O'Korn, a seasoned attorney specializing in life sciences. Dan sheds...more

Goodwin

Janssen and Samsung Bioepis Settle STELARA (Ustekinumab) Litigation

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Samsung Bioepis recently reported that it has signed a settlement and license agreement with Johnson & Johnson (“J&J”) in the United States relating to SB17, Samsung Bioepis’s ustekinumab biosimilar to J&J’s STELARA®. If SB17...more

Clark Hill PLC

Understanding Licensing Arrangements in the Consumer Goods Industry

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Because the consumer goods industry thrives on brand recognition, many businesses seek to expand their market presence and leverage their established intellectual property through licensing. This typically occurs through...more

Foley & Lardner LLP

IP Considerations in Protecting Autonomous Vehicle Software with Patents and Copyrights

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As autonomous vehicles and associated software become more commonplace in the automotive industry, it is important to recognize which forms of intellectual property grant protection within quickly evolving areas of technology...more

Goodwin

Genentech Files Lawsuits Against Biogen and Millennium for Past Royalties on the Cabilly Patents

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This week, Genentech filed separate lawsuits against Biogen and Millennium, alleging breach of a license agreement to the Cabilly patents (U.S. Patent No. 6,331,415 and 7,923,221)....more

Linda Liu & Partners

Current State and Emerging Challenges of SEP Licensing for Intelligent Connected Vehicles in China (II)

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III. Principles and Methods Adopted by Chinese Courts for Calculating SEP Royalties in Lawsuits in the Field of Communications - 1. Regarding Justiciability of SEP License Disputes in China - Interpretation of the Supreme...more

Kilpatrick

6 Key Takeaways - What You Don't Know Can Hurt You: Best Practices and Hot Topics For Patent & Technology Licensing

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Kilpatrick Townsend attorneys Farah Cook and Michelle Tyde recently presented “What You Don’t Know Can Hurt You: Best Practices and Hot Topics For Patent & Technology Licensing Transactions” at the firm’s Kilpatrick Townsend...more

Eversheds Sutherland (US) LLP

Tough Medicine, Part 2: Litigation lessons from Medtronic

​​​​​​​The Tax Court issued its second opinion in Medtronic following a remand by the US Court of Appeals for the Eighth Circuit (Medtronic, Inc. v. Comm’r, 900 F.3d 610 (8th Cir. 2018)) of its earlier decision. In that...more

Whitcomb Selinsky, PC

Surviving a Motion to Dismiss and Pleading a Plausible Claim

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This case deals with the requirements needed to survive a motion for dismissal (MD). Spectre Corporation entered into a contract with the National Aeronautics and Space Administration (NASA) under the Nat’l Aeronautics and...more

Knobbe Martens

The Heightened Standard of Proving Induced Infringement

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ROCHE DIAGNOSTICS CORPORATION v. MESO SCALE DIAGNOSTICS, LLC - Before Newman, Prost, and Taranto. Appeal from the U.S. District Court for the District of Delaware. Summary: A finding of inducing infringement requires...more

Fitch, Even, Tabin & Flannery LLP

Where Is the Federal Circuit on Using Comparable Licenses to Prove Reasonable Royalties and Apportionment in Patent Cases?

In patent litigation, the adequacy of proof of apportionment in reasonable royalty damage claims is often a challenging issue that is hotly contested by the parties. The Federal Circuit has recently focused on the use of...more

McDermott Will & Emery

Federal Circuit Sends iPhone Patent Dispute Back for Third Damages Trial

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Considering numerous claim construction, infringement and damages issues related to patents allegedly covering Apple’s iPhones 5 and 6 series technology, a panel of the US Court of Appeals for the Federal Circuit determined...more

Orrick, Herrington & Sutcliffe LLP

Licensing, Joint Ownership and the UPC – What to Watch Out For

Not bothering with the upcoming Unitary Patent and Unified Patent Court in your license and other patent-related agreements? Not a good idea, if you want to avoid potentially unpleasant surprises. This Insight flags key...more

Goodwin

Ascletis and Suzhou Alphamab Expand their Partnership into Worldwide License Agreement for ASC22 (Envafolimab) to Treat Hepatitis...

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Ascletis Pharma Inc. (Ascletis) and Suzhou Alphamab Co., Ltd. (Suzhou Alphamab) jointly announced that Ascletis’ subsidiary and Suzhou Alphamab have entered into an exclusive worldwide licensing agreement (excluding Greater...more

Knobbe Martens

Be Careful What You Agree To: Incorporated Rules Clearly and Unmistakably Delegate Determining Arbitrability

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ROHM SEMICONDUCTOR USA, LLC v. MAXPOWER SEMICONDUCTOR, INC. Before Lourie, O’Malley, and Chen.  Appeal from the U.S. District Court for the Northern District of California. Summary:  An arbitration agreement, which...more

Knobbe Martens

No Standing for Second Bite at the Apple

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APPLE, INC. v. QUALCOMM, INC. Before Newman, Prost, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents that Apple licenses from...more

McDermott Will & Emery

It’s Not Esoteric: Absent Ambiguity, Plain Contractual Language Governs

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Rudimentary principles of contract law stipulate that words in a contract that are plain and free from ambiguity must be understood in their usual and ordinary sense. Applying such principles, the US Court of Appeals for the...more

Wiley Rein LLP

No Coverage for Second Lawsuit Alleging Acts that Correlate to Acts Alleged in Earlier Lawsuit Predating Claims-Made Policy Period

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A federal district court, applying Florida law, has held that an insurer owed no duty to defend or indemnify its insured because the acts giving rise to the underlying litigation were related to earlier litigation that...more

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