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Patent Litigation Exclusive Licenses

McDermott Will & Emery

Exclusive Licensee Has Constitutional but Not Statutory Standing

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The US Court of Appeals for the Federal Circuit vacated the dismissal of an exclusive licensee’s complaint for lack of statutory and constitutional standing, despite affirming that the licensee had no statutory standing where...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Goodwin

PTAB Introduces Precedential Opinion Recommendation Portal

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As a result of feedback it received, the PTAB introduced a new web portal that allows any member of the public to nominate a decision for precedential or informative designation. The request must provide information about the...more

Proskauer - Minding Your Business

Federal Circuit Issues a Splintered Ruling on the Eleventh Amendment Immunity and Rule 19 Joinder Analysis

On July 24, 2020, a panel of the Court of Appeals for the Federal Circuit issued splintered precedential opinions surrounding the interplay of state sovereign immunity under the Eleventh Amendment and required joinder of...more

Akin Gump Strauss Hauer & Feld LLP

Merger Clause in a Patent License Agreement May Not Extinguish a Prior Covenant Not to Sue

The Federal Circuit recently affirmed a district court’s holding that a merger clause in a patent license settlement agreement did not extinguish a prior covenant not to sue on the same patent because the agreement did not...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

Knobbe Martens

Integration Clause Does Not Necessarily Extinguish Prior Agreement on Same Patent

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MOLON MOTOR AND COIL CORP. v. NIDEC MOTOR CORPORATION - Before Lourie, Reyna, and Hughes. Appeal from U.S. District Court for the Northern District of Illinois. Summary: In interpreting an integration clause that...more

McDermott Will & Emery

Breach of Contract Claim Does Not Arise Under Patent Law

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The US Court of Appeals for the Federal Circuit reversed a district court decision that retained jurisdiction over a breach of contract action, finding that the action did not sufficiently implicate issues of patent law and...more

Akin Gump Strauss Hauer & Feld LLP

District Court Must Consider Joining Patent Owner Prior to Dismissal Where Licensee Lacks Substantial Rights to Bring Suit, but...

The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed...more

Knobbe Martens

Rule 19 Joinder Provisions Are Not Optional

Knobbe Martens on

LONE STAR SILICON INNOVATIONS v. NANYA TECHNOLOGY CORPORATION - Before O’Malley, Reyna, Chen. Appeal from the Northern District of California. Summary: When a patent assignee does not acquire all substantial rights in...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2019

PATENT CASE OF THE WEEK - Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, Appeal No. 2018-1581, -1582 (Fed. Cir. May 30, 2019) - In the only precedential patent case this week, the Federal Circuit...more

Patterson Belknap Webb & Tyler LLP

PTAB Holds Indian Tribes Don’t Offer an Out from IPR

In a highly anticipated decision on the Saint Regis Mohawk Tribe’s motion to terminate inter partes review proceedings, the Patent Trial and Appeal Board rejected tribal sovereign immunity to IPRs. The PTAB’s decision also...more

Troutman Pepper

Allergan’s Mohawk Gambit May Be Doomed – PTAB Rethinks the Scope of Sovereign Immunity

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A few months ago, the Irish drug company Allergan moved to shield its key patents on its dry-eye drug Restasis from challenge at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent Office by assigning these patents to...more

McDermott Will & Emery

Patent Owner Must Be Subject to Personal Jurisdiction for Declaratory Judgment

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The US Court of Appeals for the Federal Circuit agreed with a district court that it lacked personal jurisdiction over a patent owner/declaratory judgment defendant where the defendant’s only contacts with the forum were the...more

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