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  • Federal Circuit Underscores Importance Of Carefully Reviewing The Language In A Covenant Not To Sue When Entering A License Agreement

    On February 28, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Eastern District of New York’s summary judgment decision to dismiss AlexSam, Inc.’s (“AlexSam’s”) lawsuit for breach of contract against MasterCard International Inc. (“MasterCard”). AlexSam owns two U.S. patents directed to prepaid cards that can be used with point-of-sale devices. In 2005, AlexSam granted MasterCard a license to the two patents. In exchange, MasterCard agreed to pay ongoing royalties in the amount of a fee per licensed transaction. The two patents expired on July 10, 2017.

    Categories : LicensingSummary Judgment
  • The Federal Circuit Nullifies $2.2 Billion Judgment

    On December 4, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming in part, reversing in part, vacating in part, and remanding the decision of the United States District Court for the Western District of Texas (the “district court” or “Western District”) that U.S. Patent Nos. 7,523,353 (the “’353 patent”) and 7,725,759 (the “’759 patent”), (collectively, the “asserted patents”) were infringed and damages should be awarded. VLSI Tech. LLC v. Intel Corp., No. 2022-1906, 2023 WL 8360083 (Fed. Cir. Dec. 4, 2023). More specifically, the Federal Circuit affirmed the infringement of the ’373 patent but reversed the infringement of the ’759 patent; vacated the damages award for the ’373 patent; reversed the denial of Appellant’s, Intel Corporation (“Intel”), motion for leave to amend; and remanded the matter.

    Categories : DamagesLicensing
  • Federal Circuit Finds Term Of Court-Imposed FRAND License Violated Seventh Amendment Right To A Jury Trial

    On December 5, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating-in-part, reversing-in-part and remanding for further proceedings the decision and order of the United States District Court for the Central District of California imposing “fair, reasonable and non-discriminatory” (FRAND) rates in a binding worldwide license between an owner of certain standard-essential patents (SEPs) and a manufacturer of mobile devices that implement technology covered by the SEPs.  TCL Commc’n Tech. Holdings Limited v. Telefonaktiebolaget LM Ericsson, F.3d (Fed. Cir. Dec. 5, 2019).  The CAFC ruled that the district court deprived the SEP owner of its right to a jury trial when the district court decided from the bench to impose a term of the FRAND license that was—in substance—compensatory relief for the mobile phone manufacturer’s past wrongful acts.
  • Federal Circuit Finds That Patent Sublicenses Do Not Automatically Terminate Upon Termination Of The Main License Agreement

    On October 17, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) vacated the judgement of the United States District Court for the District of Delaware granting a motion to dismiss for failure to state a claim on the ground that the defendant had a valid license to the patents-in-suit.  Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., __ F.3d __ (Fed. Cir. Oct. 17, 2019).  The CAFC found that the license defense could not be resolved on a motion to dismiss because the license was ambiguous, and remanded to the district court. 
  • Federal Circuit Affirms That Obligation-To-Assign Term In Employment Agreement Is Not Sufficient To Give Employer Standing To Sue For Infringement

    ​On January 11, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the district court’s decision that an obligation to assign, without an actual assignment, does not transfer ownership in a patent.  Advanced Video Technologies LLC v. HTC Corp., appeal nos. 2016-2309, 2016-2310, 2016-2311.  Ownership in a patent initially vests with the named inventors, each of whom is a co-owner of a pro rata undivided interest in the patent.  Because each inventor owns a pro rata undivided interest, he or she may take actions without approval of any other co-owner.  For example, the inventor may make or sell a product covered by the patent, non-exclusively license others to make or sell such a product, or transfer by assignment ownership to a third party.  Where a patent is co-owned by more than one party, Federal Circuit jurisprudence requires that all co-owners must be joined to confer standing to bring a lawsuit against an alleged infringer. 

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    Category : Licensing