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Divided and Conquered? The Precarious Standing of Patent Licensees
In a business world of ever-growing sophistication, the division of patent rights has become increasingly popular among owners of intellectual property. Patent licenses have grown both in number and variety, with agreements that divide enforcement rights from usage rights, that limit licensees to certain geographical areas or types of use, or that put some of these limitations together in a single license.
What are the risks involved in such agreements? Could a party who has contracted for the right to enforce a patent nevertheless be denied standing to sue? To the likely dismay of many licensees, the Federal Circuit has now answered the latter question with a resounding 'yes.' In Int'l Gamco v. Multimedia, the court denied standing to the holder of a so-called 'enterprise license,' which granted exclusive rights to enforce and practice a patent within a limited territory and field of use. Int'l Gamco v. Multimedia Games, Inc., U.S. App. LEXIS 24099 (Fed. Cir. Oct. 15, 2007) (Rader, J.). This ruling comes on the heels of two other standing cases, Propat and Morrow, in which parties that held enforcement rights to a patent but not legal title were barred from pursuing those rights in court. Propat Int'l Corp. v. RPost, Inc., 473 F.3d 1187 (Fed. Cir. 2007); Morrow v. Microsoft Corp., 499 F.3d 1332 (Fed. Cir. 2007). Together, these rulings have set important new guidelines for which kinds of licensees will have independent standing to sue infringers, which will be compelled to join their patentees, and which will be left out in the cold.
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
Blockchain Domains: New Developments for Brand Owners
Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.