From Academia to the Marketplace: The Ins and Outs of University Spinout Licenses with Dan O’Korn
Podcast: The Briefing - How to Avoid Bearing The Risks of A Naked License
The Briefing: How to Avoid Bearing The Risks of A Naked License
Understanding NFTs and Their Legal Implications
Healthcare Tech: How Are Licensing Agreements Bridging the Industry Divide?
Monthly Minute | Licensing Agreements
How To Be A Project Advocate By Diffusing Adjacent Neighbor Tensions
Pennsylvania Tavern Games Licenses
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
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
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
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
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
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
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
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
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
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
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
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
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
In interpreting a patent license agreement originally drafted in the era of third generation (3G) cellular networks, the US Court of Appeals for the Federal Circuit found that the license agreement covered subsequent wireless...more
Despite no precedential patent decisions at the Federal Circuit, the Court still addressed some interesting issues last week, including whether a license agreement from 1993 bars patent infringement claims on LTE technology...more
In the highly contentious world of SEP licensing, one of the biggest debates in recent years has been between advocates of compulsory “access to all” and the existing “license to all” Regimes. Framed as such, this is an...more
278-1. Federal Circuit Remands Patent Infringement Case to Answer Patent Ownership and License to Practice Questions - The Federal Circuit recently vacated a grant of summary judgment of non-infringement of a patent,...more
AntennaSys, Inc. v. AQYR Techs., Inc., Appeal No. 2019-2244 (Fed. Cir. Oct. 7, 2020) - In the only precedential opinion issued by the Federal Circuit this week, the Court declined to reach the merits of a judgment of...more
Whether your portfolio comprises one patent or hundreds of patents, it is important to utilize the portfolio to support continued production and innovation efforts; to explore alternative revenue streams through licensing of...more
273-1 Federal Circuit Holds University of Texas is Immune from Involuntary Joiner, Holds Case against Potential Infringer may Proceed in School’s Absence - The Federal Circuit recently affirmed-in-part, reversed-in-part,...more
Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more
PATENT CASE OF THE WEEK - Uniloc 2017 LLC v. Apple, Inc., Appeal Nos. 2019-1922, -1923, -1925, -1926 (Fed. Cir. July 9, 2020) - This week’s case of the week focuses, not on a patent issue, but on a procedural issue common...more
After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent...more
Perfect Your Patent Prosecution Strategies and Master the Patent Application Process in the U.S and Around the World. ACI’s 18th Global Summit on Life Sciences Patents virtual conference this August will provide practical...more
PATENT CASE OF THE WEEK - Arctic Cat Inc. v. Bombardier Recreational Products Inc., Appeal No. 2019-1080 (Fed. Cir. Feb. 19, 2020) - In this week’s Case of the Week, the Federal Circuit addresses issues relating to the...more