Written By: David Youngkin

Recently the Federal Circuit in Lumen View Technology LLC v. Findthebest.com, Inc. upheld the district courts finding of exceptionality.  However, the Federal Circuit found it was improper to double the awarded attorney fees. 

Lumen View is the exclusive license of U.S. Patent 8,069,073 (“the ‘073 patent”), which is directed to methods of facilitating bilateral and multilateral decision making.  Findthebest.com (“FTB”) operated a website that provided personalized product and service recommendations based on user inputted information.  Lumen View filed suit alleging that FTB infringed the claims of the ‘073 patent.

Category: Licensing 

Written By: Justin Blaufeld

In  Brulotte v. Thys Co., 379 U.S. 29 (1964), the Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  Over time, some have come to criticize this rule as an undue restraint on the right to contract.  For example, a patent holder may want to cover a portfolio of patents with one contract, or structure a royalty deal to provide for larger payments in the future in exchange for smaller payments today. The Supreme Court revisits Brulotte to decide whether or not the rulings of the past still hold true today.

Category: Licensing  
By: Christian Hannon, Contributor 
TitleWi-LAN USA Inc. v. Ericsson, Inc., No. 2013-1566 (Fed. Cir. Aug. 1, 2014).
IssueThe parties disagree about the correct interpretation of multiple parts of the [Most-Favoured Licensee ("MFL")] Provision, including whether it applies to patents that Wi-LAN acquried after the execution of the PCRA.
Wi-LAN USA, Inc., at *7.
HoldingBecause we conclude that the MFL Provision does not apply to patents acquired after the execution of the PCRA, Ericsson's rights under the MFL Provision were not triggered by the Texas suit. We therefore, reverse the Florida court's dismissal of Wi-LAN's infringement suit with respect to the Florida Patents. [...] We also affirm the Texas court's finding that the MFL provision did not bar Wi-LAN's Texas suit, albeit on different grounds.
Id. at *17. 
Category: Licensing 
By: Abby Lin, Contributor 
TitleEndo Pharma. Inc. v. Actavis, Inc., No. 20130-1628, -1662 (Fed. Cir. March 31, 2014).
[1: Express License] Endo contends that the plain language of the agreements, which limit “Licensed Patents” to several enumerated patents and applications claiming priority to them, does not grant Appellees an express license to practice the asserted patents [US 8,309,122(‘122), US 8,329,216(‘216), US 7,851,482(‘482)] [which are not listed on the agreement, but claim priority to enumerated patents in the agreement]. It argues that the “No Implied Rights” provision further makes clear that the agreements do not cover the asserted patents.
Endo Pharma. Inc., at *6 (text added).
[2: Implied License and 3: Injunction / Estoppel] Endo contends that the plain language of the Endo argues that the district court legally erred in concluding the Appellees are impliedly licensed to practice the asserted patents due to legal estoppel.
Id. at *10.
[1: Express License] The ’216 and ’122 patents do not cross-reference the applications that issued as any of the licensed patents. Therefore, it is quite clear that the ’122 and ’216 patents do not “claim priority to” any of the licensed patents [...] There is no reading of [the Roxane and Actavis contract] language that extends coverage to patents that merely have a provisional application in common with the licensed patents [...]. Finally, the ’482 patent is completely unrelated to any of the previously licensed patents, and is likewise not covered by the agreement.
Id. at *8-9.
[2: Implied License] “Appellees seek to capture via implied license subject matter in addition to that for which they bargained.”
Id. at *12.
[3: Injunction / Estoppel] Endo is not estopped from asserting the patents at issue in these appeals because none of the asserted patents is a continuation of any of the licensed patents [and is therefore beyond the terms of what was bargained for].
Id. at *13-14 (text added).
© 2000-2023, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy