Federal Circuit Patent Watch: How can an irrevocable license be revoked?

Federal Circuit Patent Watch: How can an irrevocable license be revoked?

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Precedential Federal Circuit Opinions   

1.  UNILOC 2017 LLC v. GOOGLE LLC [OPINION] (2021-1498, 2021-1500, 2021-1501, 2021-1502, 2021-1503, 2021-1504, 2021-1505, 2021-1506, 2021-1507, 2021-1508, 2021-1509, 11/4/2022) (Lourie, Dyk, Hughes)

Dyk, J. Reversing grant of motion to dismiss, due to lack of standing, and remanding. The district court found that the patent owner had granted an irrevocable, non-exclusive license to a third party and therefore lacked standing to pursue the present case. The patent owner argued that even though the prior license was irrevocable, it had nonetheless been terminated by a Termination Agreement and that, therefore, the patent owner had exclusive rights to enforce the patents and standing to pursue the present case. The Court agreed with patent owner finding that while an irrevocable license could not be terminated unilaterally by the grantor, such a license could be terminated by mutual agreement between the parties.

2.  UNILOC USA, INC. v. MOTOROLA MOBILITY LLC [OPINION] (2021-1555, 2021-1795, 11/4/2022) (Lourie, Dyk, Hughes)

Dyk, J. Affirming dismissal due to lack of standing. Patent owner was collaterally estopped from arguing that it has not previously granted a license, including a right to sublicense, and that existence of license deprived patent owner of standing.

3.  In Re APPLE INC. [ORDER] (2022-162, 11/8/2022) (Dyk, Reyna, Taranto)

Reyna, J. Granting petition for mandamus “to the extent that the district court’s amended scheduling order is vacated, and the district court is directed to postpone fact discovery and other substantive proceedings until after consideration of [defendant’s] motion for transfer.” The Court stated that “decision of a transfer motion must proceed expeditiously as the first order of business and that venue discovery must proceed immediately to enable such a prompt decision of the transfer motion.”

4.  SOCLEAN, INC. v. SUNSET HEALTHCARE SOLUTIONS, INC. [OPINION] (2021-2311, 11/9/2022) (Newman, Lourie, Prost)

Prost, J. Affirming grant of preliminary injunction.

5.  AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION [OPINION] (2021-1321, 2021-1323, 2021-1379, 2021-1382, 11/14/2022) (Stoll, Schall, Cunningham)

Stoll, J. Affirming Board decisions in inter partes reviews finding some, but not all, of the challenged claims unpatentable. Petitioner argued that patent owner’s proposed amendments were improper because, in addition to addressing a ground of unpatentability, they also included other changes not responsive to an unpatentability ground. The Court disagreed finding that “so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner may also make additional amendments to a claim without running afoul of the relevant statutes and regulation.” Regarding arguments that the amended claims were not enabled, the Court concluded “that the Board did not err in determining that the proposed amended claims were enabled, despite an admitted error in the specification, because that error and its correction would have been obvious to a person of ordinary skill in the art.” The Court also rejected arguments that patent owner’s motion to amend should have been denied because it allegedly “injected an inventorship issue into the patents.” Regarding commercial success, petitioner argued that the Board improperly addressed issues of infringement. The Court disagreed noting that the Board revised its final written decisions to change “infringe” to “read on.”


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