Category Archives: Licensing

DC erred in denying ownership of foreign patents arising from non-disclosure agreement

SiOnyx LLC et al. v. Hamamatsu Photonics K.K. et al. Docket No. 2019-2359, 2020-1217 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2359.OPINION.12-7-2020_1697100.pdf) LOURIE, REYNA, WALLACH December 7, 2020 Brief Summary:  DC erred in failing to transfer ownership of foreign patents arising from confidential information disclosed under an … Continue reading

Posted in Assignment / Ownership, Damages, Licensing, Unjust enrichment | Leave a comment

Infringement by GSK’s inhalers and damages determination affirmed

Vectura Limited v. GlaxoSmithKline LLC et al. Docket No. 2020-1054 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1054.OPINION.11-19-2020_1688174.pdf) PROST, BRYSON, WALLACH November 19, 2020 Brief Summary:  DC finding that GSK’s inhaler composition infringe Vectura’s patent and the ~$90 million damages award affirmed. Summary:  GSK appealed jury finding … Continue reading

Posted in Claim Construction, Damages, Licensing | Leave a comment

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

Posted in Licensing, Uncategorized | Leave a comment

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

Posted in Generics / ANDA, Licensing | Leave a comment

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

Posted in Assignment / Ownership, Licensing, State Sovereignty | Leave a comment

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

Posted in Article III disputes, Licensing | Leave a comment

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

Posted in Licensing, Uncategorized | Leave a comment

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

Posted in Licensing, Uncategorized | Leave a comment

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

Posted in Bankruptcy, Licensing, Uncategorized | Leave a comment

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

Posted in Assignment / Ownership, Inter Parties Review (IPR), IPR, Licensing | Leave a comment