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Patent Licenses: The Devil Is in the Details
When entering into a patent license, the most time is often spent on two issues: 1) how much money, and 2) what am I getting or granting for the money. Several recent appellate court decisions remind us that attention also needs to be paid to other provisions, as they can drastically affect one's rights. This article discusses three such decisions that address declaratory judgment actions, arbitration, and termination, that collectively remind us that the devil is in the details.
Declaratory Judgments
In Medimmune, Inc. v. Genentech, Inc., 427 F.3d 958 (Fed. Cir. 2005), the Federal Circuit upheld the district court's decision and ruled that a party cannot sue for a declaratory judgment of invalidity (and unenforceability) when it has a license under the patent-in-suit, as there is not a 'reasonable apprehension of suit.' Stated another way, one cannot gain the benefit of a license agreement while simultaneously challenging an underpinning of that agreement, namely the validity of the patent. The Federal Circuit's reasoning was that due to the license agreement, there is no 'case of actual controversy' under 28 U.S.C. '2201. In other words, a mere adverse interest between the parties is not enough. To satisfy the controversy requirement there needs to be real apprehension or threat of litigation, not merely the possibility that if the licensee stops paying then it will be sued. The Federal Circuit was not persuaded by public policy arguments including that the public interest is served by allowing challenges to patents.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Anti-Assignment Override Provisions
UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?