Category Archives: Licensing

DC grant of SJ affirmed due to “an unenforceable agreement to agree”

Phytelligence, Inc. v. Washington State UniversityDocket No. 2019-2216PROST, REYNA, STOLLAugust 27, 2020 Brief Summary: DC grant of SJ to WSU affirmed since option agreement was “an unenforceable agreement to agree”, not an “agreement with open terms” that could be deciphered … Continue reading

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DC denial of Takeda’s permanent injunction affirmed based on License Agreement definitions

Takeda Pharm. U.S.A., Inc. v. Mylan Pharm. Inc. Docket No. 2020-1407, -1417 PROST, NEWMAN (D), HUGHES July 31, 2020 Brief Summary: DC decisions denying Takeda a permanent injunction affirmed due to Final Court Decision regarding Licensed Patents as defined in … Continue reading

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UT cannot be involuntarily joined due to state sovereignty, but DC incorrectly analyzed whether case could proceed without UT

Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine Docket No. 2019-1424 NEWMAN (D/C), O’MALLEY, TARANTO (C) July 24, 2020 Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in … Continue reading

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DJ grant of SJ of non-infringement vacated due to pre-existing settlement agreement

Serta Simmons Bedding, LLC et al. v. Casper Sleep Inc. Docket No. 2019-1098, -1159 DYK, PLAGER, STOLL February 13, 2020 Brief Summary: DC grant of SJ vacated and remanded due to pre-existing settlement agreement. Summary: Serta appealed DC grant of … Continue reading

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DC dismissal affirmed as grandchild patent impliedly licensed in settlement agreement

Cheetah Omni LLC v. AT&T Services, Inc. et al. Docket No. 2019-1264 LOURIE, BRYSON, CHEN February 6, 2020 Brief Summary: DC dismissal of Cheetah’s claims against AT&T affirmed since grandchild patent was impliedly included in prior license to grandparent parent. … Continue reading

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DC grant of SJ affirmed since covenant not to sue and exclusive license directed to different subject matter and not covered by merger clause

Molon Motor and Coil Corp. v. Nidec Motor Corp. Docket No. 2019-1071 LOURIE, REYNA, HUGHES January 10, 2020 Brief Summary: DC grant to SJ barring Molon since there was no merger of two agreements affirmed. Summary: Molon appealed DC grant … Continue reading

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DC motion to dismiss remanded due to ambiguity regarding sublicense survival after bankruptcy

Fraunhofer-Gesellschaft v. Sirius XM Radio Inc. Docket No. 2018-2400 DYK, LINN, TARANTO October 17, 2019 Brief Summary: DC grant of motion to dismiss reversed and remanded for reconsideration of evidence relating to survival of a sublicense after bankruptcy. Summary: Fraunhofer … Continue reading

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Mylan Pharmaceuticals Inc. et al. v. Saint Regis Mohawk Tribe

IPR Nos. 2016-01127 through -001132 U.S. Pat. Nos. 8,685,930B2; 8,629,111 B2; 8,642,556 B2; 8,633,162 B2; 8,648,048 B2; 9,248,191 B2 (“Allergan patents”) USPTO Decision Denying Tribe Motion to Terminate Brief summary: Board denied the Tribe’s motion to dismiss the IPR proceedings … Continue reading

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Prism Technologies LLC, et al. v. Sprint Spectrum et al.

Docket No. 2016-1456, -1457 TARANTO, LINN, CHEN March 6, 2017 Brief Summary: Jury finding of infringement and award of $30 million as a reasonable royalty upheld. Settlement agreement with AT&T was properly admitted as reasonable royalty evidence. Jury/DC properly relied … Continue reading

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Bayer Cropscience AG et al. v. Dow Agrosciences LLC et al.

Docket No. 2016-1530, -1623 MOORE, TARANTO, CHEN March 1, 2017 Non-precedential Update:  SCOTUS denied review (12/4/17) Brief Summary: DC confirmation of international arbitration tribunal’s award to Bayer of $455 million for breach of contract (under French law) and patent infringement … Continue reading

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