Covenants Not to Sue Trigger Patent Exhaustion

The interaction of the patent exhaustion doctrine and covenants not to sue was highlighted in a recent opinion from the District of Delaware in Purdue v. Collegium. The court denied Collegium’s motion to dismiss, which was premi… Read More

Reasonable Patent Royalties Require Proper Apportionment

Damages for patent infringement must be apportioned to the infringing features of an accused product and supported by substantial evidence. Finjan, Inc., v. Blue Coat Systems Inc., No. 2016-2520 (January 10, 2018) (precedential).… Read More

With License Ambiguous, Patent Exhaustion Heads to Jury

In Audio MPEG, Inc. v. Dell Inc., the Eastern District of Virginia denied summary judgment of patent exhaustion because it was ambiguous whether a license between Audio MPEG and Dell’s supplier Microsoft covered the allegedly in… Read More

The Plain Meaning of a Covenant Not to Sue

How can you draft a covenant not to sue for patent infringement without agreeing to restrictions that will prevent you from enforcing your patent rights against some unknown party in the future? In Securus Technologies Inc. v. Glo… Read More

When Are Patent Claims Standard-Essential?

The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 930… Read More

Pleading Implied License as an Affirmative Defense to Patent Infringement

An implied license is an affirmative defense to patent infringement. Because the defense is, by definition, highly fact-specific, it is not always clear what allegations are required to adequately plead the implied license defense… Read More

When Is a Covenant Not to Sue Like a Patent License?

Although parties often go to great pains to distinguish covenants not to sue from patent licenses, those two legal constructs may not be treated any differently by the courts. For example, in Innovus Prime, LLC v. Panasonic Corp.… Read More

Broad Grant of Patent Rights Includes Reissues

The Federal Circuit has upheld Intel’s licensing defense where asserted reissue patents issued after the relevant license agreement was terminated.  Intel Corp v. Negotiated Data Solutions, No. 2011-1448 (Fed. Cir. Dec. 17,… Read More

Patent Exhaustion Based on Foreign Sales

Sales outside the United States exhausted a patent owner’s rights in its U.S. patent, according to Multimedia Patent Trust v. Apple, Inc., No. 10-CV-2618-H (KSC), 2012 U.S. Dist. LEXIS 167479 (S.D. Cal. Nov. 9, 2012). There… Read More

2nd Cir. Applies Lear Doctrine to Pre-Lititgation Settlement Agreement

The Second Circuit has held that “a clause in a settlement agreement which bars a patent licensee from later challenging the patent’s validity is void for public policy reasons under the Supreme Court’s decision in L… Read More