News & Analysis as of

IP License Standing

McDermott Will & Emery

Standing Ovation…Denied!

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more

Fish & Richardson

ITC Monthly Wrap-Up: January 2024

Fish & Richardson on

This month’s ITC wrap-up focuses on an initial determination in an investigation regarding constitutional standing, which is a requirement at the Commission as in federal court....more

McDermott Will & Emery

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

WilmerHale

Federal Circuit Patent Watch: How can an irrevocable license be revoked?

WilmerHale on

Precedential Federal Circuit Opinions - UNILOC 2017 LLC v. GOOGLE LLC [OPINION] (2021-1498, 2021-1500, 2021-1501, 2021-1502, 2021-1503, 2021-1504, 2021-1505, 2021-1506, 2021-1507, 2021-1508, 2021-1509, 11/4/2022) (Lourie,...more

WilmerHale

Fifth Circuit Antitrust Ruling Misinterprets FRAND's Purpose

WilmerHale on

The U.S. Court of Appeals for the Fifth Circuit recently held in Continental Automotive Systems Inc. v. Avanci LLC that Continental lacked Article III standing to pursue antitrust claims. Continental alleged that the...more

Dechert LLP

UK Court of Appeal rules on the rights of licensees to bring patent infringement claims

Dechert LLP on

The UK Court of Appeal has issued its judgment in one of the latest hearings in Neurim Pharmaceuticals v Generics (UK) relating to Neurim’s insomnia drug, Circadin. The Court of Appeal ruled that an exclusive licensee has...more

Kidon IP

5th Circuit’s Continental v. Avanci Decision Endorses “Access-to-all”, rejects compulsory “license-to-all”

Kidon IP on

Yesterday, the 5th Circuit issued its decision in the Continental v. Avanci Appeal, reversing the district court’s decision that Continental had standing under Article III of the Constitution. The decision finds Continental...more

McDonnell Boehnen Hulbert & Berghoff LLP

University of South Florida Research Foundation, Inc. v. Fujifilm Medical Systems U.S.A., Inc. (Fed. Cir. 2021)

The issue of standing can be outcome-determinative:  without it, no matter how worthy a party's position or arguments, a court will not consider them without standing.  The vagaries of standing and its importance were...more

Knobbe Martens

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

Knobbe Martens on

MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

Knobbe Martens

No Standing for Second Bite at the Apple

Knobbe Martens on

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

Foley & Lardner LLP

. License Agreement Not Enough for Standing on Appeal of an IPR Apple Inc. v. Qualcomm Inc.

Foley & Lardner LLP on

In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm. Background - Qualcomm sued...more

Proskauer - Minding Your Business

When Is Less Really More for a Patent Licensee?

In Apple v. Qualcomm, Federal Circuit Finds No Standing to Challenge Validity of a Few Patents When Many Were Licensed - The development timeline for small-molecule drugs and biologics is lengthy, estimated to take...more

Haug Partners LLP

Federal Circuit Finds Insufficient Evidence to Establish Standing to Appeal IPR Decisions in Apple Inc. v. Qualcomm Inc.

Haug Partners LLP on

On April 7 2021, the Federal Circuit in Apple Inc. v. Qualcomm Inc., No. 20-1561, — F.3d —-, 2021 WL 1287437, *1, *5 (Fed. Cir. Apr. 7, 2021), held that Apple failed to establish standing to appeal inter partes review (IPR)...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity

The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or...more

Knobbe Martens

Licensee Lacks Standing to Appeal an Adverse IPR Decision Based On Royalty Payments for a Patent Portfolio and a Speculative...

Knobbe Martens on

APPLE, INC. v. QUALCOMM, INC. Before Moore, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents it licenses from Qualcomm, despite...more

Haug Partners LLP

Threshold Issues, Misdirected Lawyering, and a Frustrated Federal Circuit

Haug Partners LLP on

The Federal Circuit, in an opinion by Judge O’Malley, did not hold back in expressing its displeasure in being asked to resolve a claim construction dispute in AntennaSys, Inc., v. AQYR Technologies, Inc. and Windmill...more

Proskauer - Minding Your Business

Are Antitrust Claims Against Licensors of Standard Essential Patents Dead On Arrival?

If the September 2020 Continental Automotive Systems, Inc. opinion is any indicator, the answer seems to be “yes,” at least where an alleged violation of fair, reasonable, and nondiscriminatory (“FRAND”) terms and conditions...more

Faegre Drinker Biddle & Reath LLP

Lack of Co-ownership for Terminally Disclaimed Patents May Doom a Lawsuit and Result in an Award of Attorneys’ Fees

Can lack of co-ownership for a terminally disclaimed patent render your otherwise well-founded infringement lawsuit baseless, requiring you to pay your adversary’s attorneys’ fees? At present, the answer may depend on the...more

Knobbe Martens

11th Circuit Decides Dispute on Kardashian’s Beauty Mark

Knobbe Martens on

The Kardashian sisters were the celebrity endorsers for a cosmetic line previously called “Khroma Beauty” that was created and marketed by Boldface....more

Bradley Arant Boult Cummings LLP

Substance Over Labels: Establishing Standing in Patent Infringement Suits - Intellectual Property News

The Federal Circuit’s decision last week in Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, et al. (in addition to previous decisions from the court on this issue) emphasizes exactly how fact-specific the...more

McDermott Will & Emery

Kardashians Walk - Trademark Licensee Has No Standing to Sue for Infringement

The US Court of Appeals for the 11th Circuit held that an exclusive foreign licensee lacked standing to sue for trademark infringement in the United States and affirmed the district court’s grant of summary judgment. Kroma...more

Dorsey & Whitney LLP

European Licensee Lacked Sufficient Rights to Enforce Trademark Claim Against Kardashian Sisters

Dorsey & Whitney LLP on

Can a licensee sue for trademark infringement under Section 43(a) of the Lanham Act? On April 1, 2019, the Eleventh Circuit issued its decision in Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc. et al., and held...more

Mintz - Intellectual Property Viewpoints

International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC. In Certain Audio...more

Jones Day

Owning the Patent Isn’t Always Enough for Standing

Jones Day on

In a recent Initial Determination (“ID”), Administrative Law Judge Lord ruled that a patent owner did not have standing to sue without joining a third party to which certain rights had been transferred. Certain Audio...more

Dorsey & Whitney LLP

The TTAB Issued a TKO to a Licensee’s Claim of Priority

Dorsey & Whitney LLP on

When two boxing companies sparred before the TTAB, the gloves came off—and that wasn’t only because the dispute concerned a trademark registration for boxing gloves. In Moreno v. Pro Boxing Supplies, Inc., the petitioner,...more

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