News & Analysis as of

Breach of Contract Patents

Goodwin

Life Sciences Licensing and M&A Update: Catching Up on Recent Decisions Affecting Commercially Reasonable Efforts Definitions and...

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Recently, the Delaware Chancery Court and the Third Circuit issued three significant decisions on key issues affecting licensing and M&A transactions in the life sciences industry....more

McDonnell Boehnen Hulbert & Berghoff LLP

Andersen v. Stability AI: Defendants' Motion to Dismiss Narrows the Case, But Only Slightly

In the lawsuit brought against them for using visual artists' work to teach their large language model, and producing near-identical copies in response to prompts, Stability AI, Midjourney, DeviantArt, and Runway AI moved to...more

McDermott Will & Emery

Read the Fine Print: Covenant Not to Sue “At Any Time” Terminated Upon License Expiration

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Illustrating the importance of carefully drafting and reviewing language in a covenant not to sue, the US Court of Appeals for the Federal Circuit found that the plain language of a covenant permitted a licensor to sue a...more

K&L Gates LLP

Fraud May Not Always Unravel All–What Does the Contract Say?

K&L Gates LLP on

Introduction - In the recent case of Innovate Pharmaceuticals Ltd v University of Portsmouth Higher Education Corporation [2024] EWHC 35 (TCC), the English High Court has determined that a limitation of liability clause in a...more

WilmerHale

Federal Circuit Patent Watch: A comparative statement in a patent specification can be “definitional” for purposes of claim...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  PARKERVISION, INC. v. VIDAL [OPINION] (2022-1548, 12/15/2023) (Prost, Wallach, and Chen)* - Chen, J. The Court affirmed the PTAB’s determination that the patent...more

Dunlap Bennett & Ludwig PLLC

What Are The Grounds For A Cease-And-Desist Letter?

If someone is hurting you or your business, one option is to send a cease-and-desist letter (also known as a “demand letter”). What is it, and what are the grounds for a cease and desist letter? This letter informs the...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

Cooley LLP

Illegality Doctrine Rejected in Legal Cannabis Patent Case, Confirming Patent Enforceability

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As the industry for cannabis that is legal under state and/or federal law continues to expand, a flurry of court cases in recent years have addressed whether these businesses can utilize the federal courts to vindicate their...more

AEON Law

Patent Poetry: No Contract Breach for Failing to Pay Royalties after Patent Expires

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The Tenth Circuit has affirmed a lower court’s judgment dismissing an action claiming breach of a patent settlement agreement. The court agreed that the patent owner failed to establish damages for unpaid royalties, given...more

McDonnell Boehnen Hulbert & Berghoff LLP

Koninklijke Philips N.V. v. Thales DIS AIS Deutschland USA LLC (Fed. Cir. 2022)

The Federal Circuit today affirmed a decision by the District Court denying defendant Thales DIS AIS Deutschland USA's motion for preliminary injunction to prevent patentee plaintiff Koninklijke Philips N.V. from obtaining an...more

Sheppard Mullin Richter & Hampton LLP

Forum Selection Clause Can Preclude PTO Validity Challenges

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Enforces Forum Selection Clause to Prevent IPR Petitions

The Federal Circuit recently reversed the district court and remanded for entry of a preliminary injunction enjoining defendant Sarepta Therapeutics, Inc. from proceeding with inter partes review (IPR) petitions at the Patent...more

Knobbe Martens

IPR Proceedings Were Not Prohibited by a Forum Selection Clause in a Non-disclosure Agreement

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KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. Before Newman, Prost, and Chen. Appeal from the United States District Court for the Southern District of New York. Summary: The forum selection clause in the parties'...more

Mintz - Intellectual Property Viewpoints

US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND

The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier...more

Dorsey & Whitney LLP

(Updated) Federal Circuit Gives a Makeover to $66 Million Judgment Against Beauty Giant

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Earlier this month, the U.S. Court of Appeals for the Federal Circuit reversed a $66 million dollar judgment against beauty industry giant L’Oréal for patent infringement, trade secret misappropriation, and a related breach...more

Dorsey & Whitney LLP

Federal Circuit Gives a Makeover to $66 Million Judgment Against Beauty Giant

Dorsey & Whitney LLP on

Earlier this month, the U.S. Court of Appeals for the Federal Circuit reversed a $66 million dollar judgment against beauty industry giant L’Oréal for patent infringement, trade secret misappropriation, and a related breach...more

A&O Shearman

Penalty Clause VAR: “Extremely Harsh” But Still Enforceable

A&O Shearman on

The court in Permavent v Makin determined that although the provision before it was “extremely harsh” it was not “out of all proportion” to the claimants’ legitimate business interests and so was not an unenforceable penalty....more

JAMS

Is ADR the Cure for COVID-19-Related Litigation? - The benefits of having a neutral with life sciences experience to resolve your...

JAMS on

As we continue our battle against COVID-19, one of the successes is the speed with which pharmaceutical companies have developed vaccines. For those not familiar with the science and the process of getting new drugs to...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

Knobbe Martens

Non-Disclosure Agreement Controls Ownership of Patents Arising From Confidential Information Received Thereunder

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SIONYX LLC v. HAMAMATSU PHOTONICS K.K. Before Lourie, Reyna, and Wallach. Appeal from the U.S. District Court for the District of Massachusetts. Summary: A party who discloses confidential information pursuant to a NDA...more

ArentFox Schiff

Federal Circuit Court of Appeals Makes Waves For Post-Employment Invention Assignment Provisions

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The Federal Circuit Court has issued an opinion invalidating a post-employment invention assignment provision in an employment agreement because the assignment provision violated California law disfavoring restrictive...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Remains Unwilling to Deny Inter Partes Review Based on a Contractual Forum-Selection Clause

In a recent decision granting institution of an inter partes review (IPR), the Patent Trial and Appeal Board reconfirmed that it will not deny an IPR petition just because the parties previously agreed to resolve their...more

Knobbe Martens

The Mere Presence of Patent Issues in a Contract Dispute Does Not Create Federal Jurisdiction

Knobbe Martens on

ANTENNASYS, INC. v. AQYR TECHNOLOGIES, INC. Before, O’Malley, Bryson, and Reyna. Appeal from the U.S. District Court for the District of New Hampshire - Summary: The Federal Circuit held that claim construction issues...more

Mintz - Intellectual Property Viewpoints

Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging,...more

Haug Partners LLP

Takeda Defeats Motion to Dismiss Patent and Contract Claims

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On September 9, 2020, Judge Richard G. Andrews of the United States District Court for the District of Delaware ruled in favor of Takeda Pharmaceuticals U.S.A., Inc. in the case Takeda Pharmaceuticals U.S.A., Inc. v. Mylan...more

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