Recent U.S. Court Decisions and Developments Affecting Licensing

les Nouvelles - Journal of the Licensing Executives Society, Volume LIII No. 2, June 2018

11 Pages Posted: 18 Jun 2018

See all articles by John Paul

John Paul

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

D. Brian Kacedon

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Multiple version iconThere are 3 versions of this paper

Date Written: April 20, 2018

Abstract

I. Agreements 1. Drafting a license agreement so infringing activity outside a licensed field of use results in breaching the agreement. 2. Drafting an employment agreement’s assignment provisions to provide the right to sue for patent infringement. II. Ability to Sue and Be Sued 3. Avoiding suit in a jurisdiction where the ANDA filer merely expresses intent to market infringing products. 4. Losing the ability to sue for patent infringement in a jurisdiction where defendants ceased to be present by unreasonably delaying. III. Patent Enforcement and Enforceability 5. Losing the ability to enforce patents by failing to comply with policies of Standard Setting Organizations. 6. Using extensive licensing to show validity, reasonable royalty, willfulness, and good conduct by the patent owner. IV. PTO Validity Challenges 7. Appealing PTO decisions to institute IPR validity challenges based on timing. 8. Limiting prosecution of related patent applications by disclaiming patent claims in an IPR validity challenge. V. Damages 9. Using the entire market value of a product as a base for calculating royalties without showing that the inventive features drove market demand.

Keywords: agreements, sue, be sued, patent infringement, validity, appealing PTO, damages

Suggested Citation

Paul, John and Kacedon, D. Brian, Recent U.S. Court Decisions and Developments Affecting Licensing (April 20, 2018). les Nouvelles - Journal of the Licensing Executives Society, Volume LIII No. 2, June 2018, Available at SSRN: https://ssrn.com/abstract=3166279

John Paul (Contact Author)

Finnegan, Henderson, Farabow, Garrett & Dunner LLP ( email )

901 New York Ave. NW
Washington, DC 20001
United States

D. Brian Kacedon

Finnegan, Henderson, Farabow, Garrett & Dunner LLP ( email )

901 New York Ave. NW
Washington, DC 20001
United States

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