News & Analysis as of

Patents License Agreements

Fish & Richardson

Munich Appeals Court Reinforces Security-Centric FRAND Framework in SEP Dispute

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Standard-essential patent (SEP) licensing remains a critical issue in Europe, where political bodies and national courts at times diverge in the interpretation of fair, reasonable, and non-discriminatory (FRAND) licensing...more

Baker Botts L.L.P.

Patent Apportionment: Anything You Say in a License Agreement May Be Used Against You in a Court of Law

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Over the last several years, the Federal Circuit has increasingly scrutinized patent litigants’ reliance on “comparable licenses” as a means for calculating a reasonable royalty, including whether the license needs to be...more

Lowndes

The Power of Patents: Protecting Your Innovation and Boosting Your Business

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Whether you’re a startup founder, an innovator, or a multi-national corporation, understanding the strategic importance of patents can transform the way you protect and leverage your intellectual property (IP) portfolio....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

Alston & Bird

Patent Case Summaries | Week Ending October 11, 2024

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AlexSam, Inc. v. Aetna, Inc., No. 2022-2036 (Fed. Cir. (D. Conn.) Oct. 8, 2024). Opinion by Stark, joined by Lourie and Bryson. AlexSam filed a complaint accusing Aetna of patent infringement based on Aetna’s “Mastercard...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

Skadden, Arps, Slate, Meagher & Flom LLP

EU Court of Justice Takes a Firm Stance Against Patent Settlement Agreements

The European Union’s Court of Justice (ECJ) has rendered its two long-awaited judgments in the European Commission’s (EC’s) perindopril case. The 27 June 2024 judgments concern: - The EC’s appeal of the General Court’s...more

Knobbe Martens

Federal Circuit Review | June 2024

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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

McDermott Will & Emery

The $X Factor: Demystifying Damages Calculations

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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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2024

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

Knobbe Martens

Reliably Determining Reasonable Royalty Rates From Lump-Sum Licenses

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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

Jones Day

NIH Seeks Comments on Patient Access Plan Requirements in Patent License Agreements

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The Situation: The National Institutes of Health ("NIH") proposed a new policy requiring entities that receive licenses from the NIH to certain taxpayer-funded inventions to submit Access Plans for ensuring broader patient...more

Gray Reed

The Taxman, Technology Litigation and Cavalier Settlement Structures

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Intellectual property (“IP”) is hugely important to businesses. Given that importance, IP owners must occasionally litigate against the unauthorized use of their technology. The costs of such litigation and appurtenant...more

Hutchison PLLC

From Academia to the Marketplace: The Ins and Outs of University Spinout Licenses with Dan O’Korn

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Ever wondered how startups in the pharmaceutical and biotech sectors navigate the maze of university licensing agreements? Join us as we sit down with Dan O'Korn, a seasoned attorney specializing in life sciences. Dan sheds...more

Goodwin

Janssen and Samsung Bioepis Settle STELARA (Ustekinumab) Litigation

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Samsung Bioepis recently reported that it has signed a settlement and license agreement with Johnson & Johnson (“J&J”) in the United States relating to SB17, Samsung Bioepis’s ustekinumab biosimilar to J&J’s STELARA®. If SB17...more

Clark Hill PLC

Understanding Licensing Arrangements in the Consumer Goods Industry

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Because the consumer goods industry thrives on brand recognition, many businesses seek to expand their market presence and leverage their established intellectual property through licensing. This typically occurs through...more

Foley & Lardner LLP

IP Considerations in Protecting Autonomous Vehicle Software with Patents and Copyrights

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As autonomous vehicles and associated software become more commonplace in the automotive industry, it is important to recognize which forms of intellectual property grant protection within quickly evolving areas of technology...more

Goodwin

Genentech Files Lawsuits Against Biogen and Millennium for Past Royalties on the Cabilly Patents

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This week, Genentech filed separate lawsuits against Biogen and Millennium, alleging breach of a license agreement to the Cabilly patents (U.S. Patent No. 6,331,415 and 7,923,221)....more

Kilpatrick

6 Key Takeaways - What You Don't Know Can Hurt You: Best Practices and Hot Topics For Patent & Technology Licensing

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Kilpatrick Townsend attorneys Farah Cook and Michelle Tyde recently presented “What You Don’t Know Can Hurt You: Best Practices and Hot Topics For Patent & Technology Licensing Transactions” at the firm’s Kilpatrick Townsend...more

Eversheds Sutherland (US) LLP

Tough Medicine, Part 2: Litigation lessons from Medtronic

​​​​​​​The Tax Court issued its second opinion in Medtronic following a remand by the US Court of Appeals for the Eighth Circuit (Medtronic, Inc. v. Comm’r, 900 F.3d 610 (8th Cir. 2018)) of its earlier decision. In that...more

Knobbe Martens

The Heightened Standard of Proving Induced Infringement

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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

Fitch, Even, Tabin & Flannery LLP

Where Is the Federal Circuit on Using Comparable Licenses to Prove Reasonable Royalties and Apportionment in Patent Cases?

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

McDermott Will & Emery

Federal Circuit Sends iPhone Patent Dispute Back for Third Damages Trial

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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

Orrick, Herrington & Sutcliffe LLP

Licensing, Joint Ownership and the UPC – What to Watch Out For

Not bothering with the upcoming Unitary Patent and Unified Patent Court in your license and other patent-related agreements? Not a good idea, if you want to avoid potentially unpleasant surprises. This Insight flags key...more

Goodwin

Ascletis and Suzhou Alphamab Expand their Partnership into Worldwide License Agreement for ASC22 (Envafolimab) to Treat Hepatitis...

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Ascletis Pharma Inc. (Ascletis) and Suzhou Alphamab Co., Ltd. (Suzhou Alphamab) jointly announced that Ascletis’ subsidiary and Suzhou Alphamab have entered into an exclusive worldwide licensing agreement (excluding Greater...more

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