Category Archives: Licensing

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Docket No. 2016-1530, -1623 MOORE, TARANTO, CHEN March 1, 2017 Non-precedential Update:  SCOTUS denied review (12/4/17) Brief Summary: DC confirmation of international arbitration tribunal’s award to Bayer of $455 million for breach of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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Wi-LAN USA, Inc. et al. v. Ericsson, Inc. et al.

Docket No. 2015-1766, -1794 MOORE, O’MALLEY, WALLACH January 17, 2017 Non-precedential Brief Summary: DC grant of SJ for anticipation and non-infringement vacated; determination that Most Favored Licensee Provision of Agreement only applied to patents owned as of the date thereof. … Continue reading

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Luminara Worldwide, LLC v. Liown Electronics Co. et al.

Docket No. 2015-1671 MOORE, O’MALLEY, TARANTO February 29, 2016 Brief Summary: Luminara found to possess “substantially all rights” in Disney’s patent such that joinder was not required. Preliminary injunction was vacated due to error in DC’s claim construction. Summary: Liown … Continue reading

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Kimble et al. v. Marvel Entertainment, LLC

SCOTUS Docket No. 13-720 June 22, 2015 Brief Summary: Under Brulotte (US 1964), a patent licensing agreement cannot extend patent royalties beyond the patent expiration date. Summary: Marvel agreed to buy Kimble’s patent for a Spider Man toy in exchange … Continue reading

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