Barney J. Cassidy, General Counsel and Executive VP of Tessera, Inc. as well as PLI faculty member, recently had an op-ed article published on Politico.com. The article, entitled, “Shooting a patent straw man,” challenges the notion that patent trolls and their readiness to litigate is at the root behind the recent surge of patent portfolio growth among the major tech companies.
The patent wars are all the rage amongst tech companies these days. Not too long ago, Microsoft Corp. made news when announcing it purchased approximately 925 patents from AOL, Inc. for an estimated $1.1 billion dollars. The commentary regarding that purchase was equally focused on the impressive sale price for the amount of patents purchased as it was on the fact that tech companies are looking twice at their patent portfolios as litigation and licensing tools.
The latest development is that Facebook, who is currently in a patent infringement battle with Yahoo, recently purchased 650 of the AOL patents from Microsoft for an estimated $550 million dollars. This recent acquisition comes just one month after Facebook purchased 750 patents from IBM. (more…)
Earlier in the week, India’s controller general of patents issued a decision stating that Bayer’s patented cancer drug, Nexavar, may be manufactured and sold in a cheaper generic form within the country. According to Indian law, the standard that must be met in considering whether a compulsory license may be granted is whether an invention is available to the public at a “reasonably affordable price.” If it is not reasonably affordable, the Indian government holds the right to promote public health and enforce a compulsory license of the patented invention.
Compulsory licenses have been granted throughout the world via the World Trade Organization’s multilateral agreements (e.g. TRIPS), but they have been done so primarily in regards to HIV and AIDs drugs. India is only the second nation to grant a compulsory license for a patented cancer drug; Thailand was the first. (more…)
Next up is Peter Brown of Baker Hostetler discussing critical pitfalls in Intellectual Property Licenses.
Sublicense v. Valid Exercise of Rights Under License Agreement
- - Licensees may be in violation of the license agreement if they enter into agreements with third parties that effectively equal a sublicense
- - Courts will look at the nature of the relationship between the parties to determine whether a sublicense exists (E.I. du Pont de Nemours and Co. v. Shell Oil Co.,498 A.2d 1108, Court held arrangement equals sublicense).
- - Implied Licenses – parties should explicitly state all of the rights that are included in a license or state those that are not included in the license or disclaim any implied licenses. Certain rights may be implied by the circumstances, even though not explicitly stated where without the implied right, the license would not benefit the licensee. (Met-Coil Systems Corp v. Korners, Unltd.803 F.2d 684 , Court held that unrestricted sales of a machine useful only in performing the claimed process & producing the claimed product plainly indicates that the grant of a license should be inferred) (more…)