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Royalties License Agreements Patents

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

McDermott Will & Emery

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

McDermott Will & Emery on

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

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Exclusion of Expert Opinion on Reasonable Royalty Rate

On August 26, in MCL Intellectual Property, LLC v. Micron Technology, Inc., the Federal Circuit affirmed exclusion of an expert opinion regarding a reasonable royalty, holding that the district court did not abuse its...more

Knobbe Martens

Forget About Seeking a Reasonable Royalty—Court Affirms Order Excluding Damages Theory for Flash Memory Patent

Knobbe Martens on

MLC INTELLECTUAL PROPERTY, LLC v. MICRON TECHNOLOGY, INC. Before Newman, Reyna, and Stoll. Appeal from the United States District Court for the Northern District of California. Summary: When relying upon lump sum...more

Patterson Belknap Webb & Tyler LLP

Judge Glasser Rules Patentee’s PTAB Arguments Against Standing Doom Breach of License Action

On June 17, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) ruled on the parties’ objections to reports and recommendations issued by U.S. Magistrate Judge Stephen M. Gold, and ultimately granted a motion for...more

Mintz - Intellectual Property Viewpoints

Upon Reconsideration, E.D.Tex. Judge Affirms Ericsson’s Previously-Vacated Jury Award Against TCL

On May 10, 2018, Magistrate Judge Payne reconsidered his previous March 2018 order which had vacated a jury award, and granted plaintiff Ericsson’s motion for reconsideration. The May ruling makes clear that the accused...more

K&L Gates LLP

CJEU Confirms EU Competition Law Does Not Prevent Royalties for Revoked Patent Licences

K&L Gates LLP on

On 7 July 2016, the Court of Justice of the European Union (CJEU) ruled that, provided that a licensee is free to terminate a licence agreement on reasonable notice, it can be obliged to pay royalties even after the patent...more

McDermott Will & Emery

EU Court Rules That Royalties for Unpatented Technology Are Not Necessarily Anticompetitive

McDermott Will & Emery on

On 7 July 2016, the Court of Justice of the European Union (CJEU) handed down a judgment on whether Article 101 of the Treaty on the Functioning of the European Union (TFEU) must be interpreted as precluding effect being...more

Robins Kaplan LLP

[Webinar] Best Practices for Licensing in Today's Evolving Legal Framework - June 16th, 1:00pm CST

Robins Kaplan LLP on

The Supreme Court of the United States recently held that royalty payments beyond the expiration of a patent are per se unlawful. However, many ground-breaking technologies being developed and licensed from the nation's...more

Farella Braun + Martel LLP

Drafting Intellectual Property Agreements: Best Practices From a Litigator’s Perspective

As intellectual property licensing continues to grow more prevalent, legal practitioners and business personnel are being asked to craft and negotiate agreements that can significantly impact a business’s ability to compete...more

McDermott Will & Emery

Sublicensee’s Purchase of Licensee Not Prohibited under the License Agreement - VDF FutureCeuticals, Inc. v. Stiefel Labs., Inc.

McDermott Will & Emery on

The U.S. Court of Appeals for the Seventh Circuit ruled that a sublicensee of patent and trademark rights that purchased its sublicensor in order to reduce the royalties it owned to the licensor was not prohibited from buying...more

Kelley Drye & Warren LLP

Ninth Circuit Affirms Judge Robart’s RAND Decision (Microsoft V. Motorola)

Yesterday, the Ninth Circuit court of appeals issued a decision affirming Judge Robart’s RAND decision in the much watched Microsoft v. Motorola case, basically ruling that the determination of a reasonable and...more

Eversheds Sutherland (US) LLP

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

Brooks Kushman P.C.

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

Brooks Kushman P.C. on

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

Mintz

Kimble and Post-Expiration Royalties: The Next Big Thing, or Much Ado About Nothing?

Mintz on

Today, as we previewed here, the US Supreme Court analyzed the question of whether patent holders should be allowed to contract for royalty payments that continue to accrue after the expiration of the subject patent. While...more

Morrison & Foerster LLP

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

Morrison & Foerster LLP on

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

Brooks Kushman P.C.

Supreme Court 2014 Patent Preview

Brooks Kushman P.C. on

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

Goodwin

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

Goodwin on

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

McDermott Will & Emery

License Definition Trumps Need for Actual Infringement Finding

McDermott Will & Emery on

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

Morrison & Foerster LLP

Indiana DOR Finds Economic Nexus, Disregards UPS

The Indiana Department of Revenue recently concluded that a company that earned royalty income from licensing trademarks and trade names to two of its Indiana affiliates, and had no physical presence in the state, nonetheless...more

Orrick, Herrington & Sutcliffe LLP

U.S. Supreme Court Holds That Patentees Bear the Burden of Proof of Infringement in DJ Actions Brought by Licensee

A patentee bears the burden of proving infringement when a licensee seeks a declaratory judgment of non-infringement, the U.S. Supreme Court has held. The ruling reversed the Federal Circuit and clarified declaratory...more

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Updated: Dec 28, 2021:

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Privacy Officer
JD Supra, LLC
150 Harbor Drive, #2760
Sausalito, CA 94965

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Privacy Officer
JD Supra, LLC
150 Harbor Drive, #2760
Sausalito, CA 94965

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Updates to This Policy

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