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Patents 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

Seyfarth Shaw LLP

Six Essential Tips for Understanding Intellectual Property Rights Under Government Contracts

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In celebration of the release of the 6th Edition of the Government Contracts Compliance Handbook, we are sharing six essential tips for understanding intellectual property (IP) rights in government contracts. Contractors...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

Eversheds Sutherland (US) LLP

Recent ruling provides guidance on 363 asset sales

On February 12, 2025, the US District Court for the District of Delaware issued a significant ruling in the case of HE, Inc. v. Avadim Holdings Inc. and Relion Holdings LLC. This decision arose from the Chapter 11 bankruptcy...more

Ropes & Gray LLP

Considerations When Contracting with Academic Spinouts

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Due in part to the Bayh-Dole Act of 1980, which incentivized universities to commercialize their technology, the number of academic spinouts has grown in recent years. This is particularly true in the life sciences space,...more

Fenwick & West LLP

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

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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

2025 BakerHostetler IP Perspectives

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To describe the rise of artificial intelligence (AI) as rapid is a vast understatement. From its ubiquitous presence assisting us in our most mundane daily tasks to its warm embrace by business leaders eager to revolutionize...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

Mintz - Intellectual Property Viewpoints

Best Practices in Developing Winning IP Strategies for AI Companies

Intangible assets represent over 90% of the value of every AI company.  An effective IP strategy can help protect these assets and steer your Company to higher valuations and provide leverage in commercialization of your...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

K&L Gates LLP

Fraud May Not Always Unravel All–What Does the Contract Say?

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Introduction - In the recent case of Innovate Pharmaceuticals Ltd v University of Portsmouth Higher Education Corporation [2024] EWHC 35 (TCC), the English High Court has determined that a limitation of liability clause in a...more

Venable LLP

NFT Intellectual Property Considerations

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Want to learn more about drafting, negotiating, and understanding intellectual property and technology contracts and have 10 minutes to spare? Grab your morning coffee or afternoon tea and dig into our Tech Contract Quick...more

Wyrick Robbins Yates & Ponton LLP

What are IP Assignment Agreements?

For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly...more

BCLP

Renewable Energy Case Update 2022

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As we enter 2023, we reflect on 2022 as another dynamic year in the renewables and clean energy market. The Renewables and Clean Energy team at BCLP has undertaken a review of judicial decisions reported in 2022 involving the...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

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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

A&O Shearman

Penalty Clause VAR: “Extremely Harsh” But Still Enforceable

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The court in Permavent v Makin determined that although the provision before it was “extremely harsh” it was not “out of all proportion” to the claimants’ legitimate business interests and so was not an unenforceable penalty....more

Knobbe Martens

An “Agreement to Agree” Is Unenforceable Under Washington State Law

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PHYTELLIGENCE, INC. v. WASHINGTON STATE UNIVERSITY Before Prost, Reyna, and Stoll.  Appeal from the United States District Court for the Western District of Washington. Summary: Under Washington law, a contract must be...more

McDonnell Boehnen Hulbert & Berghoff LLP

Phytelligence, Inc. v. Washington State University (Fed. Cir. 2020)

One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding...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

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