As licensing professionals await the decision of the Supreme Court in the case of Kimble v. Marvel Enterprises, Inc., which is widely believed to determine the future viability of the fifty year old decision of the Court in Brulotte v. Thys Co., it may be useful to consider the practical impact such a decision may have. The Brulotte decision held that use of the monopoly power of a patent to exact royalty payments on post expiration activities was a per se violation of the anti-trust laws. The reasoning was based on an analogy of the Court’s earlier prohibitions against tie-in arrangements where the use of a patented article required the purchase of an unpatented article. The patented invention was considered to be in the public domain upon expiration and thus free to use by all.
On Thursday, November 6, 2014, The Honorable Grace K. Obermann, Lead Administrative Patent Judge, USPTO, PTAB, will present on practicing before the PTAB at the New Jersey Intellectual Property Law Association’s seminar, “Electronics, Telecom & Software Patent Practice Update.” The seminar will also address topics such as licensing guidance, implications of recent Supreme Court decisions, and damages considerations.
On Friday, the Federal Circuit issued an opinion in Wi-LAN USA, Inc. v. Ericsson, Inc., which highlights the importance of using care when granting rights to or under patents. The interesting facts in this case resulted in two contradictory opinions from two district courts regarding the scope of an agreement pertaining to rights under certain patents. These opinions illustrate the potential dangers of unintended consequences that may arise from imprecise drafting in patent agreements.
Patent indemnification agreements, common in asset purchases, mergers and acquisitions, manufacturing, and patent licensing agreements, reduce the possibility of liability should a third party later assert its patent against the asset purchaser or licensee. However, entering into such agreements to mitigate risk can actually increase exposure. During the damages stage of patent infringement lawsuits plaintiffs often seek, with varying success, to bring in evidence of the existence of a defendant’s indemnification agreement to show that defendant knew of the patent and committed willful infringement. Thus, the very vehicle used to shift the risk of monetary liability can sometimes itself be used as a mechanism to enhance damage awards.
Like 2013, 2014 promises to be an exciting year for intellectual property law. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. As we reported, on December 6, 2013, the Supreme Court granted certiorari in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 13-298. The Alice case concerns the patentability of a computer software program used to facilitate financial transactions. Sitting en banc, the Federal Circuit split 5-5 to affirm the district court’s decision and found Alice’s patents ineligible for protection under 35 U.S.C. § 101, a fractured opinion that left lawyers and their clients uncertain about which types of software patents are patentable.
We have been reporting news and developments regarding the Intellectual Property Exchange International, Inc. (IPXI). Yesterday, the IPXI released details of its first Unit License Right (ULR) contract offering, involving among other assets, a portfolio of Philips organic light-emitting diode (OLED) technology patents. Purchasers of each ULR will be granted “the right to manufacture, use, sell, offer to sell or import five square meters of an OLED display for application in any display screen device.” So after many fits and starts, the IPXI, touted as “the world’s first financial exchange for licensing and trading intellectual property (IP) rights,” appears underway.
An End to the Seed War: Monsanto and DuPont Call Off Their Patent and Antitrust Lawsuits as a Decision in Bowman v. Monsanto is Pending
On March 25, seed giants DuPont and Monsanto entered into technology licensing agreements that ended their ongoing patent and antitrust lawsuits. According to the terms of the agreement, DuPont will pay at least $1.75 billion in licensing and royalty fees to Monsanto from 2014 to 2023. These payments include fixed royalty payments from 2014 to 2017, totaling $802 million, and per-unit based royalty payments from 2019 to 2023, subject to annual minimums, totaling $950 million. DuPont and Monsanto also will dismiss their respective patent and antitrust lawsuits, including the August 2012 damage award of $1 billion against DuPont that have been pending since 2009. Further details on these agreements can be found in DuPont and Monsanto’s joint March 26 press release and DuPont’s March 26 Form 8-K.
On Monday, the Supreme Court denied Rates Technology Inc.’s petition for writ of certiorari to hear whether a pre-litigation no-challenge provision is void under Lear, Inc. v. Adkins, 395 U.S. 653 (1969) as the Second Circuit found. We previously discussed the petition, the Second Circuit’s holding, and the no-challenge clause which prevents a licensee from challenging the validity of a patent.
The production of a party’s privileged documents is every lawyer’s–and client’s–worst nightmare because it provides additional facts (and avenues for discovery) as well as legal analysis of those facts that may not have existed. In layman’s terms, it is a game changer. A recent decision plays out this very scenario and shows that despite the production of privileged documents, they can be salvaged if the producing party acted properly before and after the disclosure.
Two recent decisions highlight the importance of proper preparation during patent litigation, from the perspective of both plaintiffs and defendants. In In re Bill of Lading, No. 2010-1493, 2012 U.S. App. LEXIS 11519 (Fed. Cir. June 7, 2012), the Court held that direct infringement only needs the same level of pleading as that outlined in Form 18 (which is a sample complaint for direct infringement) of the Appendix of Forms to the Federal Rules of Civil Procedure, while in contrast, indirect infringement needs to be pled in accordance with the higher standard delineated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). In re Bill of Lading, 2012 U.S. App. LEXIS 11519, at *17-27.