News & Analysis as of

Patent Royalties

Alston & Bird

Optis v. Apple: Hold Out and F/RAND Rate Setting in the UK Courts

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The UK Supreme Court’s review of Optis v. Apple may clarify how the concepts of hold out and hold up are considered when conducting fair, reasonable, and nondiscriminatory (F/RAND) rate setting. Our Antitrust Team examines...more

Foster Swift Collins & Smith

Patent Protection and Profitability: What Can Large Companies Teach Small Businesses?

While larger companies typically dominate patent filings, if you’re a small or mid-size business, understanding how these giants use patents can offer valuable insights for shaping your own Intellectual Property (IP)...more

Fish & Richardson

Analyzing SEPs: Strategies for Prosecution & Portfolio Development

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Industries worldwide have worked tirelessly for many years to establish technical standards — consistent norms that ensure products and services meet a baseline of quality, stability, and interoperability. While standards are...more

Fish & Richardson

Federal Circuit Provides Important Guidance on Patent Damages in Rex Medical v. Intuitive Surgical

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The U.S. Court of Appeals for the Federal Circuit has affirmed the District of Delaware’s (1) exclusion of a patent owner’s damages expert’s testimony and (2) reduction of a $10 million jury award to $1. Rex Medical, L.P. v....more

Goodwin

Biogen Ordered to Pay Genentech $88.3 Million in Past Royalties on Cabilly Patents

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On September 30, 2025, the U.S. District Court for the Northern District of California ordered Biogen MA, Inc. (“Biogen”) to pay Genentech, Inc. (“Genentech”) $88,348,123 in unpaid royalties plus interest. The parties...more

Baker Botts L.L.P.

Potential Impacts on Startups From the Federal Government Seeking Patent Royalties

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The new suggestion from Commerce Secretary Howard Lutnick that the federal government may start seeking royalties on federal-funding patents owned by universities represents a potential major change in the landscape for...more

Patterson Belknap Webb & Tyler LLP

Bound by the Agreement: Magistrate Judge Scanlon Recommends Case Dispositive Motion for Judgment on the Pleadings Be Granted

Magistrate Judge Vera M. Scanlon (E.D.N.Y.) recently recommended that, inter alia, Defendant Mastercard’s motion for judgment on the pleadings based on Plaintiff’s failure to abide by an agreement be granted. Alexsam, Inc. v....more

Kilpatrick

6 Key Takeaways | Patent and Technology Licensing: Strategies for Effective Drafting and Negotiation

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Kilpatrick’s Sonia Baldia recently presented on “Patent and Technology Licensing: Strategies for Effective Drafting and Negotiation” at the 21st annual KTIPS (Kilpatrick Townsend Intellectual Property Seminar)....more

Fish & Richardson

Developing Issues in Patent Damages: Future Royalties

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Increasingly, plaintiffs in patent infringement suits are projecting sales through the expiration of the patent, discounting for present value, and then calling the resulting figure a “lump sum” royalty. ...more

McDermott Will & Schulte

Federal Circuit lacks jurisdiction over award that doesn’t raise issue of patent law

The US Court of Appeals for the Federal Circuit determined that it lacked appellate jurisdiction over a district court judgment confirming an arbitration award stemming from a dispute over royalties paid under patent license...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Denies Appellate Jurisdiction Based on Alternative Ground for Relief

In Acorda Therapeutics, Inc. v. Alkermes PLC, the Federal Circuit held that it did not have appellate jurisdiction to review a decision by the district court in the Southern District of New York not to modify an arbitral...more

Hudnell Law Group

Federal Circuit Enforces Gatekeeping Role in Patent Damages Testimony

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On May 21, 2025, the United States Court of Appeals for the Federal Circuit, sitting en banc, reversed a $20 million damages award against Google LLC in a patent infringement dispute with EcoFactor, Inc. EcoFactor, Inc. v....more

Carlton Fields

Seventh Circuit Refuses to Vacate Arbitration Award Under Public Policy Exception

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The Seventh Circuit Court of Appeals recently refused to invalidate an arbitration award in a breach of contract case involving patent royalties based on purported violations of public policy....more

McDermott Will & Schulte

IRS Issues Final Rules on Intangible Property Repatriations

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With the allure of tax incentives for foreign derived intangible income and an increase in foreign audits scrutinizing transfer pricing, bringing intellectual property (IP) back to the United States is increasingly...more

DLA Piper

Clarifying the Enforceability of Post-patent Expiration Royalties Under Brulotte

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A closer look at Ares Trading S.A. v. Dyax Corporation - The August 2024 Third Circuit decision in Ares Trading S.A. v. Dyax Corporation contributes to the discussion of Brulotte and its progeny. Similar to C.R. Bard v....more

McDermott Will & Schulte

Rewind: Federal Circuit Grants En Banc Rehearing Over Royalty Damages

The en banc US Court of Appeals for the Federal Circuit issued a per curiam order vacating its previous panel decision upholding a district court’s denial of the defendant’s motion for a new trial on damages. In that...more

DLA Piper

C.R. Bard v. Atrium: The Impact of FDA Approval Timelines on Royalty Payments

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A case pending in the Ninth Circuit Court of Appeals highlights the importance of negotiating the term of royalty payments in the license of Food and Drug Administration (FDA)-regulated products. This is particularly notable...more

McDermott Will & Schulte

The Conversation Continues: Some Post-Patent-Termination Royalties Are Acceptable

For the second time in less than two weeks, a circuit court decided an appeal hinging on the Brulotte rule, which holds that patent royalties are impermissible when based on payments for the use of expired patents. Like the...more

McDermott Will & Schulte

Some Post-Expiration Patent Royalty Payments May Be OK

The US Court of Appeals for the Ninth Circuit reversed a district court’s finding that a contract impermissibly allowed for patent royalties after the patent expired because the post-termination royalty payments were...more

BakerHostetler

Damages Experts: Has the Federal Circuit Lowered the Admissibility Standard?

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Damages experts in patent cases have a tough task. They must construct a hypothetical negotiation between the parties that would have taken place just before the alleged infringement started. And the goal of this hypothetical...more

Axinn, Veltrop & Harkrider LLP

No Damages, No Injunction . . . and No Opposition?

The Federal Circuit will hear oral argument on March 5, 2024, in In re: California Expanded Metal Products, Co., No. 23-1140, a case that presents two intriguing issues regarding patent remedies. The first issue is the...more

Axinn, Veltrop & Harkrider LLP

Judge Gilstrap: For Implementers of SEPs, the Penitent Will Pass

According to Judge Gilstrap in the Eastern District of Texas, obligations to negotiate under fair, reasonable, and non-discriminatory (FRAND) terms apply not only to standard essential patent (SEP) holders but to implementers...more

Procopio, Cory, Hargreaves & Savitch LLP

Unlocking Your IP’s Licensing Potential: Connecting Enterprise Value to Licensing Revenue Streams

Licensing intellectual property (IP) can be a game-changer for a company’s commercialization, whether creating research and development opportunities, opening new markets or gaining access to complementary technologies. When...more

Smith Anderson

WHITE PAPER | Key Patent Developments of 2023

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In a noteworthy year for patent law, the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit issued several decisions that will shape the patent landscape and the Federal Rules of Evidence governing...more

Axinn, Veltrop & Harkrider LLP

3 Areas Look Ripe for New SEP Licensing, Litigation

Litigation over standard-essential patents, or SEPs, can be a cyclical phenomenon, where litigation follows a generational change in technology. We saw it with 3G and 4G technology, where each generational change led to a...more

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