News & Analysis as of

Patent Litigation Contract Terms

Baker Botts L.L.P.

Seeking Royalties Beyond Patent Expiration: A Refreshed Look at Patent Misuse

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Key Takeaway: A recent Ninth Circuit decision in C.R. Bard v. Atrium reinforces the long-standing Brulotte rule against post-expiration patent royalties but clarifies that courts should assess this strictly as a legal...more

Proskauer - The Patent Playbook

The Crucial Role of Patent Due Diligence in Mergers & Acquisitions: Spotting Patent Litigation Risks Before Closing a Deal

In today’s rapidly evolving business landscape, mergers and acquisitions (“M&A”) remain a common strategic priority for companies aiming to grow, innovate, or strengthen their market position. However, the complexity of these...more

Proskauer - The Patent Playbook

A Looming En Banc Decision with Potentially Damaging Consequences – EcoFactor v. Google

For anyone following the evolving admissibility standards for expert opinions relating to patent damages, the EcoFactor v. Google case is one to watch. In December 2024, the Federal Circuit granted Google’s petition for...more

Smart & Biggar

When patents expire but royalty payments don’t: contrasting U.S. and Canadian approaches to patent licensing

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How does the expiration of the patents in one jurisdiction impact global royalty payments? This question was addressed by the United States Court of Appeal’s Ninth Circuit in C.R. Bard Inc v Atrium Medical Corporation, Case...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Purchase Orders and IP Licenses: Recent ITC Decision Underscores Need for Caution

A recent opinion issued by the U.S. International Trade Commission in Certain Power Converter Modules and Computing Systems Containing the Same (Inv. No. 337-TA-1370) serves as a reminder for sellers to be cautious with any...more

Vondran Legal

Tackling mobile application takedowns - the Musi vs Apple case

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It's never fun to see years and years of hard work go to waste. In particular, when you build an eCommerce site on a site like Etsy, Shopify, Amazon, or eBay, and get an email message or a letter informing you that you have...more

Fenwick & West LLP

DeepSeek, Model Distillation, and the Future of AI IP Protection

Fenwick & West LLP on

A flurry of developments in late January 2025 has caused quite a buzz in the AI world. On January 20, DeepSeek released a new open-source AI model called R1 and an accompanying research paper....more

Smith Anderson

Biotech Licensing Caselaw Update - 2024 Year in (Brief) Review

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Last year was a surprisingly big one for legal decisions impacting the biotechnology transactions and licensing space. Given that most biotech deals are subject to confidential alternative dispute resolution, it is unusual...more

BakerHostetler

The Difference Between Theory and Practice: Lighting Defense Group LLC v. Shanghai Sansi Electronic Engineering Company Ltd., et...

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You can’t make applesauce out of oranges — and experts may not cook up opinions with contrary facts. In Lighting Defense, the patent damages expert opined that in a “hypothetical negotiation,” the parties would have agreed to...more

Womble Bond Dickinson

Federal Circuit Reversal in Assignment Clause Case Highlights Importance of Contract Language in Intellectual Property Ownership

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In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more

Haug Partners LLP

DexCom, Inc., v. Abbott Diabetes Care, Inc.: Federal Circuit Finds Forum Selection Clause Does Not Bar IPR Proceedings Based on...

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In DexCom, Inc., v. Abbott Diabetes Care, Inc., 89 F.4th 1370 (Fed. Cir. 2024), the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s denial of a preliminary injunction, finding that a patentee could...more

Knobbe Martens

Federal Circuit Review - February 2022

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Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more

McDermott Will & Emery

Bargained-Away Rights to File for IPR May Not Be Recovered

McDermott Will & Emery on

In a precedential opinion, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of a plaintiff’s requested injunction seeking to force a patent challenger to abandon its petitions for inter...more

McDonnell Boehnen Hulbert & Berghoff LLP

Immunex Corp. v. Sandoz Inc. (Fed. Cir. 2020)

The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more

Mintz - Intellectual Property Viewpoints

Arbitration of IP Disputes in a Post-COVID-19 World

The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery and continued economic challenges. During these trying times, companies...more

Bradley Arant Boult Cummings LLP

When Merger Clauses Don't Merge - Intellectual Property News

Last week, a divided panel of the Federal Circuit extinguished Molon Motor and Coil Corporation’s hopes of going forward with a patent infringement suit against its electric motor industry competitor Nidec Motor Corporation....more

Nutter McClennen & Fish LLP

Licensee Challenges Ruling that a Standard Language Forum Selection Clause Bars PTAB Proceedings 

In a case that could have a significant impact on the interpretation and drafting of patent licensing agreements, a patent licensee filed an appeal for an en banc proceeding at the Federal Circuit to challenge the court’s...more

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