May 2015

Nonpracticing Entity Wins Permanent Injunction after Presenting Evidence that Its Licensing Model Is Based on Exclusivity
by John C. Paul, D. Brian Kacedon, and Robert C. MacKichan III
A nonpracticing entity recently won a permanent injunction against a patent infringer after presenting evidence that the licensing model used by the nonpracticing entity is based on exclusively licensing its patent rights. In particular, a Utah court found that allowing the infringer to pay an ongoing royalty to continue infringing would disrupt the patent owner’s relationships with its licensees and possibly even lead to a lawsuit against the patent owner by one of the licensees. Although the patent owner had many different licensees, its licenses were exclusive for each field of use within the market segments being licensed.

Federal Circuit Rules that the Patent Office’s Decision to Institute an IPR Proceeding Is Not Appealable
by John C. Paul, D. Brian Kacedon, and Jonathan R.K. Stroud
The Leahy-Smith America Invents Act established a new type of patent-review by the U.S. Patent and Trademark Office (PTO) known as Inter Partes Review (IPR), which was meant to provide a more efficient and less expensive alternative to district-court litigation. In a recent decision, the U.S. Court of Appeals for the Federal Circuit determined that the PTO’s decision whether to institute an IPR is not appealable. The court also determined that the PTO correctly adopted the broadest-reasonable-interpretation standard for interpreting patent claims in IPR proceedings, as opposed to the narrower standard used by district courts.   

A Patent Owner Cannot Be Sued in a State Merely Because It Licensed Companies Doing Business in that State and Threatened Suit for Patent Infringement in that State
by John C. Paul, D. Brian Kacedon, and Daniel F. Klodowski
A nonpracticing entity based in New York had twice licensed its patents to companies doing business in Texas. It sent a cease-and-desist letter to a Texas company, demanding that the company take a license to its patents. The Texas company filed suit in a Texas district court, seeking a declaratory judgment of patent invalidity and noninfringement. The court, however, dismissed the case, holding that the patent owner’s letter did not create personal jurisdiction in Texas. In reaching its conclusion, the court also found that the patent owner’s other licensing activities, including granting nonexclusive licenses to two other businesses operating in the state, did not give the court personal jurisdiction over the patent owner.

Licensee Who Receives Rights to Sue, Sublicense, and Assign Rights Can Sue for Patent Infringement without Joining the Patent Owner
by John C. Paul and D. Brian Kacedon
A Minnesota court recently rejected a challenge to a licensee’s right to sue for infringement without joining the patent owner. The court found that the licensee obtained from the patent-owner “all substantial rights” in the licensed patents, because the licensee received an exclusive license to practice the patented inventions, to enforce the patent rights, and to sublicense and assign its rights. In addition, the retention by the patent owner of a non-exclusive right to practice the invention did not prevent the licensee from receiving all substantial rights. The court also found that the licensee’s merger during the litigation with its sublicensee necessarily conveyed the right to enforce the patents to the post-merger entity.

Events
Life Sciences Workshop: Tips and Tools for Pharma and Biotech Patent Practice
June 23, 2015

 

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