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 […]
Archive | Licensing
Patent Exhaustion Based on Foreign Sales
Sales outside the United States exhausted a patent owner’s rights in its U.S. patent, according to Multimedia Patent Trust v. Apple, Inc., No. 10-CV-2618-H (KSC), 2012 U.S. Dist. LEXIS 167479 (S.D. Cal. Nov. 9, 2012). Therefore, among rulings on summary judgment motions addressing a myriad of issues, the Court granted summary judgment to Canon on its […]
Breach of Duty to Offer RAND Licensing Terms?
By Charles Bieneman on October 14, 2012 in Licensing, Software Patents, Standard Setting Organizations
A lawsuit brought against a patent owner based on an alleged failure to offer a patent license on reasonable and nondiscriminatory (RAND) terms has largely survived the patent owner’s motion to dismiss. Realtek Semiconductor Corp. v. LSI Corp., No. C-12-03451 RMW (N.D. Cal. Oct. 10, 2012). The defendants, who contended that the patents at issue […]
2nd Cir. Applies Lear Doctrine to Pre-Lititgation Settlement Agreement
The Second Circuit has held that “a clause in a settlement agreement which bars a patent licensee from later challenging the patent’s validity is void for public policy reasons under the Supreme Court’s decision in Lear, Inc. v. Adkins.” Rates Technology Inc. v. Speakeasy, Inc., No. 11-4462-cv (July 10, 2012). Rates Technology Inc. (“RTI”), owner […]
Software Licenses and Allocating Risk of Data Loss
The Utah Supreme Court has held that a software vendor is not liable for any damages after its software caused a dentist to lose all of his patient data. In Blaisdell v. Dentrix Dental Systems, Inc., No. 20100392 (Utah S. Ct. June 26, 2012), the court held that a limitation of liabilities provision was enforceable […]
No Personal Jurisdiction Based on “Location” of Patent
A patent owner’s residence in Washington state did not confer personal jurisdiction over defendants in a dispute over the defendants’ rights to license and sub-license the patent. VSIM Patent Co., LLC v. Benson, No. C12-102RSL (W.D. Wash. 2012). The action that the patent owner brought did, however, end up conferring a right to fees and […]
That Forum Selection Clause in Your Software License Matters
Here is a story to tell clients wondering why you are negotiating so hard over a seemingly mundane forum selection clause. An Illinois court, swayed in part by the fact that a paper software license had also been presented in a click-wrap agreement, enforced a forum selection clause in the license agreement that the plaintiff-licensee […]
Settlement Agreement Does Not Prevent Suit Against Microsoft Customers
There is a reason why parties negotiating settlement agreements in patent cases often devote considerable time and energy to negotiating language covering use of patented technology by the licensee’s customers and downstream users. Despite, or perhaps because of, this attention, disputes sometimes arise. Illustratively, Microsoft was recently denied summary judgment on its claim that Eolas […]
Defining the Scope of a Perpetual Software License
A perpetual software license entitled a licensee only to use versions of the software created before the license agreement terminated, despite the existence of an escrow agreement requiring the deposit in escrow of “all updates” and “all revisions” of the software’s source code. Gene Codes Forensics Inc. v. The City of New York, No. 10 […]
A Problem With a Hybrid Contract for Software and Services
Is it a good idea for vendors and customers to enter into a global agreement covering the provision of software, hardware, and software development services? Perhaps not, if one considers the recent decision of the Appellate Court of Illinois in Bruel & Kjaer v. The Village of Bensenville, No. 2-11-0500 (April 26, 2012). There, the […]