IP Marketplace
Finnegan’s monthly update on developments affecting licensing and other IP transactions
February 2016

Court Refuses to Summarily Dismiss Patent-Infringement Claims Where Questions Exist As to Whether Some or All of a License Agreement Remains in Effect
by John C. Paul, D. Brian Kacedon, and Andrew E. Renison
In Seoul Laser Dieboard System Co., Ltd. v. Computerized Cutters, Inc., an action for breach of contract and patent infringement, accused infringer Computerized Cutters, Inc. (CCI) moved for summary judgment that it could not be sued for patent infringement. CCI argued that despite its termination of a license agreement with patent owner Seoul Laser Dieboard System Co., Ltd. (SDS), a survival provision in the agreement kept in force a covenant not to sue. The U.S. District Court for the Southern District of California, however, denied CCI’s motion, finding the record incomplete and that questions remained concerning whether some or all of the license agreement continues in effect.

Further Awards of Interest, an Accounting, and Ongoing Royalties After a Jury Verdict May Depend on the Jury Instructions and the Court's Discretion
by John C. Paul, D. Brian Kacedon, and Kelly Lu
A Nebraska court granted pre-judgment and post-judgment interest on a jury award for patent infringement but refused to order an accounting and ongoing royalties, finding the jury verdict already accounted for a reasonable royalty adequately compensating the plaintiff for past, present, and ongoing infringement of its patents.

Court Enforces Hand-Shake Deal in Mediation
by John C. Paul, D. Brian Kacedon, and R. Benjamin Cassady
Agreements reached during court-appointed mediation are just as binding as court-sanctioned settlements. For example, the parties in a recent patent-infringement suit ostensibly reached a settlement during mediation, only for one party to recant days later. Giving weight to the neutral-mediator’s view that a settlement had in fact been reached, the Court rejected the recanting party’s about-face and sanctioned it for the additional fees and costs its actions forced its opponent to incur in enforcing the original agreement.

Damages May Be Awarded for Lost Sales Occurring After Patent Expiration
by John C. Paul, D. Brian Kacedon, and Laith Abu-Taleb
A Michigan court recently rejected an accused infringer’s motions seeking to foreclose recovery of post-expiration and future damages, ruling that post-expiration lost-profit damages are available under Supreme Court precedent and that the question of future patent damages, despite being inherently speculative, should go to the jury.

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Resources
Standard-Essential Patents and Pooling Update
Litigation, settlements, legislation, regulations, acquisitions

October 2015 – February 2016 Update

Events
LES Annual Meeting
April 26-28, 2016


Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001. A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc. In addition, if the decision was summarized for Federal Circuit IP blog, the Finnegan case summary is included.
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DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.

If you have any questions or need additional information, please contact:
John C. Paul, Editor
D. Brian Kacedon, Editor
Robert D. Wells, Editor
Christopher L. McDavid, Editor



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