News & Analysis as of

Breach of Contract License Agreements

WilmerHale

Use of Software by Divested Business After Spinout Brings $80,000,000 Lawsuit

WilmerHale on

As more companies seek to spin out non-core businesses and the market for carve out divestitures heats up, counsel representing potential buyers and sellers should be prepared to identify and mitigate key risks that may arise...more

Jones Day

UK Court Rules on Reverse Engineering of Mainframe Software

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IBM UK ("IBM") successfully enforced the terms of a mainframe license against the defendants who had created a competing software product....more

Morrison & Foerster LLP

Time to Assess the Damage: Implications from THJ Systems v. Sheridan

THJ Systems Ltd & Anor v. Sheridan & Anor [2024] EWHC 3195 (Ch) addressed two key issues in respect of damages related to (i) breach of contract and (ii) copyright infringement, following a determination of liability in...more

Lathrop GPM

Franchisee’s Execution of Competing Franchise Agreement During Franchise Term Forecloses Claims Against Former Franchisor

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A federal court in New Jersey granted the franchisor of the Holiday Inn and Holiday Inn Express brands (Holiday Hospitality) summary judgment on former franchisee Scion Hotels’ complaint alleging violations of the New Jersey...more

DLA Piper

C.R. Bard v. Atrium: The Impact of FDA Approval Timelines on Royalty Payments

DLA Piper on

A case pending in the Ninth Circuit Court of Appeals highlights the importance of negotiating the term of royalty payments in the license of Food and Drug Administration (FDA)-regulated products. This is particularly notable...more

Lathrop GPM

Licensor’s Fraud and Lanham Act Claims Survive Motion to Dismiss in Pennsylvania Federal Court

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A federal court in Pennsylvania granted in part and denied in part a licensee’s motion to dismiss the licensor’s breach of contract, fraud, and Lanham Acts claims. Westbrook Monster Mix Co. v. Easy Gardener Prods., Inc., 2024...more

Farrell Fritz, P.C.

Stop Blaming the Parents! – The Scope of Parental Liability for a Subsidiary’s Contract

Farrell Fritz, P.C. on

Misbehaving children? Blame the parents, right? Not so in the corporate context, at least according to Manhattan Commercial Division Justice Robert R. Reed in a recent decision, Memorial Sloan Kettering Cancer Ctr., v....more

Goodwin

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

Goodwin on

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

McDermott Will & Emery

Bayou Jambalaya: Sanction Motions, Motions to Vacate and Trade Dress Injunctions

The US Court of Appeals for the Fifth Circuit issued a three-part ruling that affirmed the district court’s denial of a motion to vacate as void the judgment based on Rooker-Feldman doctrine because the earlier state and...more

Lewitt Hackman

Franchisor 101: Waive Before Check Out

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A Georgia district court declined to dismiss a breach of contract case by a hotel franchisor against a franchisee. The court rejected the franchisee’s argument that the franchisor waived its rights under the parties’ license...more

McDermott Will & Emery

Can't Camouflage Express Trademark Contract Terms

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Addressing a range of trademark licensing issues, including discretionary approval, exculpatory contract clauses and third party beneficiary standing, the US Court of Appeals for the Federal Circuit affirmed a lower court’s...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Kannuu v. Samsung: Forum Selection Clause Did Not Prohibit IPR Challenges

In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from...more

Pillsbury Winthrop Shaw Pittman LLP

Tour de Force: Contract Terminations Due to COVID-19-Based Force Majeure – Natural Disasters

A recent decision from the Southern District of New York may pave the way for broader excuse of performance in COVID-19 force majeure litigation after finding the pandemic is a “natural disaster” that is beyond the parties’...more

Lathrop GPM

The Franchise Memorandum - Issue # 260

Lathrop GPM on

Welcome to The Franchise Memorandum by Lathrop GPM, formerly known as The GPMemorandum. Periodically, The Franchise Memorandum focuses on topics primarily of interest to companies that use distributors and dealers rather than...more

Womble Bond Dickinson

Indefinite Covenants Within License Agreement May Not Be Enforceable

Womble Bond Dickinson on

Where a software license agreement precluded the licensee from developing similar software for an undefined period of time, the license agreement inhibited “free trade” and was therefore unreasonable and unenforceable. Triage...more

McDermott Will & Emery

Cookie Crumbles Against Injunction Granted to Terminated Trademark Licensee

Concluding that a terminated exclusive trademark licensee failed to establish the elements required to impose a preliminary injunction, the US Court of Appeals for the 10th Circuit reversed the district court’s grant of a...more

Troutman Pepper Locke

Owner Did Not Waive Right to Damages by Terminating Design Contract for Convenience

Troutman Pepper Locke on

Chinese Hosp. Ass’n v. Jacobs Eng’g Grp., Inc., 2019 BL 330340, 2 (N.D. Cal. Sept. 03, 2019) - This case arises out of the alleged breach of contract and defective design for the construction of a new hospital in San...more

Sunstein LLP

Beware: Run-of-the-Mill Forum Selection Clause Could Thwart Patent Challenges

Sunstein LLP on

A patent infringement and breach of contract lawsuit in San Francisco may result in a sea change in the ability of licensees to challenge the validity of patents covered by their license. At stake is whether patent owners can...more

McDermott Will & Emery

Forum Selection Clause Prohibits Filing IPR and PGR Petitions

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In a non-precedential opinion, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of preliminary injunction requiring a licensee to withdraw its inter partes review (IPR) and post grant review...more

Lewitt Hackman

Franchisor 101: Lesson in License Agreements

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The U.S. Sixth Circuit Court of Appeals upheld summary judgment for franchisor Buffalo Wild Wings (“BWW”) rejecting a restaurant operator’s counterclaims for wrongful termination, malicious prosecution, and breach of...more

Jones Day

Forum Selection Clause May Preclude PTAB Proceedings

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The Federal Circuit recently affirmed a preliminary injunction barring PTAB proceedings in view of a forum selection clause. Dodocase VR, Inc. v. MerchSource, LLC, 2018-1724 (Fed. Cir. Apr. 18, 2019). Dodocase, the owner...more

Lewitt Hackman

Franchisor 101: Termination Is Not Enforcement

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A federal district court upheld an arbitration panel’s decision to deny attorneys’ fees to Benihana, even though Benihana won a dispute with its licensee. The licensee started arbitration claiming Benihana breached the...more

Proskauer - New England IP Blog

First-Filed Rule Prompts Dismissal of Heated Products Case in Favor of Warmer Venue

In a recent order allowing a defendant’s motion to dismiss a case involving heated products and heat pack technology, Judge Sorokin clarified a specific application of the first-filed rule. In the case at hand, Schawbel...more

Patterson Belknap Webb & Tyler LLP

PTAB Petitions Do Not “Arise Out Of” Licensing Agreement

On October 16, 2018 Magistrate Judge Gold, of the Eastern District of New York, issued a report recommending that Plaintiff Alexsam, Inc. (“Alexsam”) be denied leave to file a supplemental complaint against Defendant...more

Holland & Knight LLP

ASBCA Enforces Contractor’s Commercial Software License Against Government

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The Armed Services Board of Contract Appeals' (ASBCA) recent decision in CiyaSoft Corporation confirms that government agencies that procure commercial computer software will be subject to a seller's commercial license terms...more

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