LexisNexis® Legal Newsroom
Troutman Sanders LLP: Standing Granted in Trustee-Beneficiary Relationship, Says Judge Smith

By Matthew Osborne Standing can be a tricky issue in situations where affiliated corporate entities assign and cross-license patents amongst themselves. In Pfizer, Inc., v. Teva Pharmaceuticals USA, Inc. , Case No. 2:10cv128, 2011 U.S. Dist. LEXIS 90021 (E.D.Va. Aug. 12, 2011) [ enhanced version...

NBA Throwing Some Elbows in IP Game: Patent Licensing Co. Accuses Basketball Association of Infringing SMS Patents

If all the lemmings jumped off a cliff, would you follow? Some might, but not the NBA. Helferich Patent Licensing, LLC (HPL) has acquired licenses from some very powerful companies, including but not limited to: Anheuser Busch; Amazon; Apple; Condé Nast; Disney;...

Sunstein Kann Murphy & Timbers LLP: Pharmaceutical Companies Take Heed — Compulsory Patent License Is Awarded in India

By Thomas Carey and Nancy C. Wilker, Ph.D. As part of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), a signatory country can allow someone to produce a patented product or process without the patent owner's consent. The grounds for justifying a grant of a compulsory...

Bensen on Settlement Negotiations with a Third Party May Be Discoverable

In light of the recent trend in patent cases towards permitting discovery of patent licenses granted as part of settlement agreements ("settlement licenses") on the grounds that such licenses are pertinent to a reasonable royalty award for the infringement of the subject patent, it was just...

Trips and Bits: An Essay on Compulsory Licenses, Expropriation, and International Arbitration

By Peter B. Rutledge * * Professor of Law, University of Georgia School of Law. Excerpt from Trips and Bits: An Essay on Compulsory Licenses, Expropriation, and International Arbitration , 13 N.C. J.L. & Tech. On. 149 (June, 2012) In the early 1980s, the World Bank forecast that more than 1...

Duane Morris LLP: ITC Administrative Law Judge Rules That Ongoing Royalty Precludes Exclusion Order

In a recent decision that continues the U.S. International Trade Commission's (ITC) evolving jurisprudence on licensing, Administrative Law Judge (ALJ) Theodore R. Essex held that a running royalty awarded in a prior district court case foreclosed relief at the ITC. 1 The complainant at the ITC...

Medtronic v. Boston Scientific: A Cautionary Tale for Patent Licensees

By Nisha Patel* The U.S. Court of Appeals for the Federal Circuit decided Medtronic v. Boston Scientific [ enhanced version available to lexis.com subscribers ] - a decision having a potentially significant effect on the patent licensing landscape because of its holding that in some situations the...

Patents Post-Grant: University Technology Transfer Licensing Programs Challenged at PTAB

11th Amendment Immunity from DJ Action Does Not Extend to USPTO State university technology transfer programs enjoy immunity from declaratory judgment (DJ) actions of patent invalidity/non-infringement. This is because state entities qualify for 11th amendment immunity from suits in federal district...

Burden of Proof in a Declaratory Judgment Action by a Licensee in Good Standing

Excerpt: In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) [ an enhanced version of this opinion is available to lexis.com subscribers ], the Supreme Court held that a patent licensee does not have to breach or terminate its licensing agreement in order to bring an action for a declaratory...