News & Analysis as of

Royalties Intellectual Property Protection Patents

DLA Piper

C.R. Bard v. Atrium: The Impact of FDA Approval Timelines on Royalty Payments

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A case pending in the Ninth Circuit Court of Appeals highlights the importance of negotiating the term of royalty payments in the license of Food and Drug Administration (FDA)-regulated products. This is particularly notable...more

Irwin IP LLP

Royalty Roulette: When Contract Amendments Disconnect the Patent from the Payment

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Zimmer Biomet Holdings, Inc. v. Insall, 2024 WL 3381286 (7th Cir. July 12, 2024) - The 7th Circuit recently upheld an arbitration award and found that royalties may be collected after the expiration of the related...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Applies WesternGeco Framework to Expert’s Effort to Seek Royalties Flowing from Customers Overseas

In 2010, Trading Technologies International, Inc. (“TT”) filed suit against IBG LLC and its subsidiary Interactive Brokers LLC for patent infringement. The four patents in question, U.S. Patent Nos. 6,766,304; 6,772,132;...more

McDermott Will & Emery

Reasonable Royalty Available for Foreign Activities (But Not This Time)

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The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to preclude a patent owner from seeking damages based on method claims infringed outside of the United States but confirmed that reasonable...more

Knobbe Martens

Federal Circuit Overrules Shaw And Broadens IPR Estoppel In District Court Proceedings

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California Institute of Technology v. Broadcom Inc. and Apple Inc. Before Lourie, Linn, and Dyk (concurring/dissenting).  Appeal from the District Court for the Central District of California - Summary: IPR estoppel in...more

Fish & Richardson

Strategic IP Considerations of Batteries and Energy Storage Solutions

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The lithium-ion battery, introduced commercially in 1991, revolutionized the consumer electronics industry. Compared with older battery technologies, the lithium-ion battery was lightweight and compact, had high energy...more

Foster Garvey PC

Sports & Entertainment Spotlight: Risks of NIL Pitfalls Prove Greater Than ‘NIL’

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Just two weeks into the name, image, and likeness (NIL) era in college sports, and we are already starting to see not only novel and creative partnerships, but also the emergence of legal gray areas and pitfalls for college...more

White & Case LLP

Ongoing Appeals May Shape How Juries and Courts Determine Patent Royalties

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A patent holder that prevails in a patent infringement suit is entitled to either lost profits or a reasonable royalty. A reasonable royalty calculation often implicates the infringing product's revenues (the "royalty...more

Amundsen Davis LLC

The Value Of IP Licensing

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Intellectual Property (“IP”) – including patents, trade secrets, know-how, proprietary data, copyrights and trademarks – is a valuable asset that can be monetized for its owner’s benefit. In a typical IP license, the IP...more

Goodwin

No License, No Chips, No Problem: Ninth Circuit Delivers Qualcomm a Win in Antitrust Case Brought by the US Federal Trade...

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In a much anticipated opinion, the U.S. Court of Appeals for the Ninth Circuit reversed a California district court decision holding that Qualcomm violated U.S. antitrust laws in its licensing of standard-essential patents in...more

Holland & Knight LLP

IP Considerations During COVID-19: IP Housekeeping

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As businesses consider how to transition to a "new normal," a thorough review of intellectual property (IP) assets and a protocol for managing those assets should be part of the planning process. For many companies, the...more

Mintz - Intellectual Property Viewpoints

One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates

Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another. As a litigant, care must be taken when...more

Mintz - Intellectual Property Viewpoints

Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier

A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s...more

Mintz - Intellectual Property Viewpoints

District Court of Delaware awards an ongoing royalty that applies not just to adjudicated products but also to non-adjudicated...

Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products...more

Mintz - Intellectual Property Viewpoints

PanOptis’ Recent Victory against Huawei Demonstrates Why an International Enforcement Approach Is Advisable for Standard-Essential...

PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be...more

McDermott Will & Emery

Federal Jury Finds that Ericsson’s Licensing Offer to HTC is FRAND

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On February 15, a Texas federal jury found that Ericsson did not breach its obligation to offer HTC licenses to its standard-essential patents (SEPs) on fair, reasonable and non-discriminatory (FRAND) terms. The verdict ended...more

International Lawyers Network

TOP-10 IP Disputes in 2018

CATEGORY: Trademarks - CASE: Sony vs. PAG - DETAILS: Resolution of the Constitutional Court No. 8-P dated 13 February 2018 - SUMMARY: Unlike the counterfeit, the original (grey) product cannot be destroyed under the...more

Hogan Lovells

Standard Essential Patent Update – December 2018

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Hogan Lovells’ Standard Essential Patent (SEP) Update reports on recent news and case decisions from jurisdictions including China, Germany, Japan, the United Kingdom, and the United States. ...more

Sheppard Mullin Richter & Hampton LLP

How Blockchain Technology Can Improve the Music Industry - September 2018

Blockchain is a revolutionary technology that has great potential to solve many of the fundamental challenges facing the music industry today. In fact, this technology is uniquely suited to address issues across the various...more

Miles & Stockbridge P.C.

Uptick in University Enforcement of Intellectual Property an Indication of Stricter Enforcement Policy or a Passing Trend?

Universities have traditionally been reluctant to enforce their intellectual property (IP) against third parties. There are many reasons for this position, including adverse publicity associated with such suits, the time...more

Orrick, Herrington & Sutcliffe LLP

The World in US Courts: Orrick's Quarterly Review of Decisions Applying US Law to Global Business and Cross-Border Activities

Alien Tort Statute (ATS)/Torture Victims Protection Act (TVPA)/Anti-Terrorism Act (ATA) - District Court Dismisses ATS Claim Where Alleged Conduct in US Was Not Directly Linked to Injuries Claimed in Other Countries - ...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 3

Supplemental Examination: Potential Benefits vs. Guaranteed Risks - The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable...more

Knobbe Martens

Here’s Another Fine Mess You’ve Gotten Me Into: Best Practices for Employee, Contractor and Consulting Agreements.

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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

Farella Braun + Martel LLP

Drafting Intellectual Property Agreements: Best Practices From a Litigator’s Perspective

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

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