Finnegan’s monthly update on developments affecting licensing and other IP transactions
March 2016
Patent Owner May Terminate a Patent Validity Challenge by Granting a Covenant Not to Sue
by John C. Paul, D. Brian Kacedon, and Xiaoxiao Xue
A California district court granted the patent owner’s motion to dismiss a lawsuit involving a challenge to the validity of an asserted patent after the patent owner signed a covenant not to sue the defendant for infringement.
Copyright Infringement Case Is Blocked by First Sale Defense When Copyright Holder Failed to Show Its Software Was Merely Licensed
by John C. Paul, D. Brian Kacedon, and Sonja W. Sahlsten
Facing what the Ninth Circuit called “an otherwise slam dunk” copyright violation, an unauthorized seller of copyrighted software successfully asserted the “first sale” defense, and was therefore not liable for copyright infringement. According to the Court, if an accused copyright infringer asserts the first sale defense and produces evidence that it lawfully acquired title of genuine copies of copyrighted software, the burden shifts to the copyright holder to establish that the software was never sold, for example, by showing that the software was merely licensed. Although the copyright holder argued it always licenses and does not sell copies of its software, it failed to produce the terms of the alleged licenses governing the specific copies at issue, and was found to fall short of its burden to counter the first sale defense.
Entire Market Value Rule May Be Applied to Products Where Infringing Feature Is an Application of a Law of Nature
by John C. Paul, D. Brian Kacedon, and Robert D. Wells
In a recent patent-infringement suit, a district court permitted damages to be based on the value of the entire product under the Entire Market Value Rule and denied a motion that argued the Entire Market Value Rule should not be permitted because the claimed invention involved the application of a law of nature.
Patent Rights Are Not Exhausted by Sales Outside the United States or by Clearly-Communicated Post-Sale Restrictions
by John C. Paul, D. Brian Kacedon, and Kevin D. Rodkey
Patent owners may sell patented articles under clearly-communicated, lawful restrictions on reuse or resale without exhausting their patent rights. And international sales of patented products do not exhaust patent rights in the United States unless authorized by the patent owner.
Patent Owner May Terminate a Patent Validity Challenge by Granting a Covenant Not to Sue
by John C. Paul, D. Brian Kacedon, and Xiaoxiao Xue
A California district court granted the patent owner’s motion to dismiss a lawsuit involving a challenge to the validity of an asserted patent after the patent owner signed a covenant not to sue the defendant for infringement.
Copyright Infringement Case Is Blocked by First Sale Defense When Copyright Holder Failed to Show Its Software Was Merely Licensed
by John C. Paul, D. Brian Kacedon, and Sonja W. Sahlsten
Facing what the Ninth Circuit called “an otherwise slam dunk” copyright violation, an unauthorized seller of copyrighted software successfully asserted the “first sale” defense, and was therefore not liable for copyright infringement. According to the Court, if an accused copyright infringer asserts the first sale defense and produces evidence that it lawfully acquired title of genuine copies of copyrighted software, the burden shifts to the copyright holder to establish that the software was never sold, for example, by showing that the software was merely licensed. Although the copyright holder argued it always licenses and does not sell copies of its software, it failed to produce the terms of the alleged licenses governing the specific copies at issue, and was found to fall short of its burden to counter the first sale defense.
Entire Market Value Rule May Be Applied to Products Where Infringing Feature Is an Application of a Law of Nature
by John C. Paul, D. Brian Kacedon, and Robert D. Wells
In a recent patent-infringement suit, a district court permitted damages to be based on the value of the entire product under the Entire Market Value Rule and denied a motion that argued the Entire Market Value Rule should not be permitted because the claimed invention involved the application of a law of nature.
Patent Rights Are Not Exhausted by Sales Outside the United States or by Clearly-Communicated Post-Sale Restrictions
by John C. Paul, D. Brian Kacedon, and Kevin D. Rodkey
Patent owners may sell patented articles under clearly-communicated, lawful restrictions on reuse or resale without exhausting their patent rights. And international sales of patented products do not exhaust patent rights in the United States unless authorized by the patent owner.
Events
LES USA and Canada
Spring Meeting
April 26-28, 2016
LES Australia and
New Zealand Meeting
May 4-6, 2016
LES International Annual Meeting
May 15-18, 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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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
John C. Paul, Editor
D. Brian Kacedon, Editor
Robert D. Wells, Editor
Christopher L. McDavid, Editor
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