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Online Terms and Conditions Are Usually Enforceable

Many commercial transactions are governed by online terms and conditions provided by one party, to which another party may be bound even if provided only with a reference or link to the online terms and conditions. This truth is illustrated by the recent case of Tuscany S. Am. v. Pentagon Freight Sys., No. 4:12-CV-1309 (S.D. […]

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Patent Infringement Claims Requiring a Combination of the Covered Product and Other Components Excluded From Indemnification

A recent decision from the U.S. Court of Appeals for the Eleventh Circuit, Am. Family Life Assur. Co. v. Intervoice, Inc., No. 12-13210, 2014 U.S. App. LEXIS 5585 (11th Cir., March 27, 2014), illustrates the need for careful consideration of intellectual property infringement indemnification clauses, and exclusions thereto, especially for products that do not work […]

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Software Licensee’s Creation of Derivative Work Results in an Injunction

In case you doubted it, seemingly boilerplate provisions in software license agreements that prohibit the creation of derivative works do mean something, as exemplified in EyePartner, Inc. v. Kor Media Group LLC, No. 4:13-10072 (S.D. Fla. July 15, 2013). The court in this case granted a preliminary injunction based on such an anti-modification provision, as […]

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When Are Patent Claims Standard-Essential?

The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of […]

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Use of Software After Expiration of License Is Copyright Infringement

A software owner was granted summary judgment of copyright infringement where its licensee had breached the applicable software license agreement, and continued to use the software after the agreement expired. Clinical Insight v. Louisville Cardiology Med. Group, No. 11-CV-6019T (W.D.N.Y. July 12, 2013). The licensee could not be saved by its allegation that it had […]

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Enforcement of a Click-wrap License Agreement

Consumers who casually, even blindly, accept “click-wrap” or “browse-wrap” license agreements will be bound by those agreements so long as the user had a reasonable opportunity to accept or reject the proffered license. A recent case provides a blueprint for how to offer, and then how to enforce, a click-wrap agreement. In Zaltz v. JDate, […]

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Pleading Implied License as an Affirmative Defense to Patent Infringement

An implied license is an affirmative defense to patent infringement. Because the defense is, by definition, highly fact-specific, it is not always clear what allegations are required to adequately plead the implied license defense. However, requirements for pleading the defense, e.g., under an estoppel theory, are not unduly onerous.  The court’s denial of a motion […]

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When Is a Covenant Not to Sue Like a Patent License?

Although parties often go to great pains to distinguish covenants not to sue from patent licenses, those two legal constructs may not be treated any differently by the courts. For example, in Innovus Prime, LLC v. Panasonic Corp. & Panasonic Corp. of N. Am., Inc., No. C-12-00660-RMW (N.D. Cal. July 2, 2013), the court accepted […]

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Software Copyright Infringement Defenses: Ownership of a Copy and Implied License

A defendant accused of infringing a software copyright was, according to facts plead in the plaintiff’s complaint, an owner of a copy of the software under 17 U.S.C. § 117(a)(1). Further, the facts established that the defendant had an implied license. Therefore, the court in Zilyen, Inc. v. Rubber Mfrs. Ass’n, No. 12-0433 (RBW) (D.D.C April 2, […]

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Broad Grant of Patent Rights Includes Reissues

The Federal Circuit has upheld Intel’s licensing defense where asserted reissue patents issued after the relevant license agreement was terminated.  Intel Corp v. Negotiated Data Solutions, No. 2011-1448 (Fed. Cir. Dec. 17, 2012). Intel and National Semiconductor entered into a broad patent cross-licensing agreement in 1976.  Under that agreement, National licensed to Intel patents including […]

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