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For anyone following the evolving admissibility standards for expert opinions relating to patent damages, the EcoFactor v. Google case is one to watch. In December 2024, the Federal Circuit granted Google’s petition for...more
In celebration of the release of the 6th Edition of the Government Contracts Compliance Handbook, we are sharing six essential tips for understanding intellectual property (IP) rights in government contracts. Contractors...more
Due in part to the Bayh-Dole Act of 1980, which incentivized universities to commercialize their technology, the number of academic spinouts has grown in recent years. This is particularly true in the life sciences space,...more
Last year was a surprisingly big one for legal decisions impacting the biotechnology transactions and licensing space. Given that most biotech deals are subject to confidential alternative dispute resolution, it is unusual...more
You can’t make applesauce out of oranges — and experts may not cook up opinions with contrary facts. In Lighting Defense, the patent damages expert opined that in a “hypothetical negotiation,” the parties would have agreed to...more
Want to learn more about drafting, negotiating, and understanding intellectual property and technology contracts and have 10 minutes to spare? Grab your morning coffee or afternoon tea and dig into our Tech Contract Quick...more
The court in Permavent v Makin determined that although the provision before it was “extremely harsh” it was not “out of all proportion” to the claimants’ legitimate business interests and so was not an unenforceable penalty....more
One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding...more
The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more
The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery and continued economic challenges. During these trying times, companies...more
Last week, a divided panel of the Federal Circuit extinguished Molon Motor and Coil Corporation’s hopes of going forward with a patent infringement suit against its electric motor industry competitor Nidec Motor Corporation....more
New York Law Journal Intellectual Property Special Report March 2018 - I recently overheard one of my colleagues make the following observation: “Well, with AIA being so challenger friendly, quick, and relatively...more
You’re likely to see the same clauses repeated in most patent, trade secret and software license contracts. As a result, these agreements have a similar structure and feel, which can lead one to assume that a clause in a new...more
In This Presentation: Overview of Messes to Avoid: • Split Ownership • Agreements to Agree • Agreements with Unclear/Improper: – relation to prior agreements – term – royalty rate – execution ...more
Patent license royalty payments can be habit-forming. Some patent licenses have terms extending for potentially two decades or longer. As a result, patent licenses are frequently filed away never to be seen again....more
As intellectual property licensing continues to grow more prevalent, legal practitioners and business personnel are being asked to craft and negotiate agreements that can significantly impact a business’s ability to compete...more
SUPREME COURT CASES - The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration - In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its 1964...more