continuation : CAFC Alert

License agreement to a patent may extend to a corresponding reissue patent

Andrew Melick | December 19, 2012

Intel Corp. v. Negotiated Data Solutions, Inc.

December 17, 2012

Panel:  Prost, Wallach and Linn.  Opinion by Linn.

Summary

Intel and National Semiconductor Corp. (“National”) entered into a cross-licensing agreement.  The agreement gave Intel rights to National’s patents and patent applications having an effective filing date during the period in the agreement which lasted from 1976 to 2003.   This case deals with four patents that were covered under the agreement. National assigned these patents to Vertical Networks, Inc. (“Vertical”) in 1998.  Vertical then filed broadening reissue applications for three of the patents.  In 2003, Vertical assigned the original patents and the reissue applications to Negotiated Data Solutions, Inc. (“N-Data”).  In 2005 and 2006, well after the agreement expired, the PTO issued reissue patents to N-Data.  The issue in this case is whether the agreement, which licenses National patents to Intel, automatically extends to any reissue patents that are derived from those licensed National patents.  The CAFC held that the license agreement extends to the full scope of any coverage available by way of reissue for the invention disclosed.


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Every Patent Practitioner’s Nightmare – Prosecution Mistakes That Can’t Be Fixed

Stephen G. Adrian | April 25, 2012

Landmark Screens, LLC, v. Morgan Lewis & Bockius, LLP, and Thomas D. Kohler

April 23, 2012

Panel: Bryson, Clevenger and O’Malley. Opinion by Clevenger.  Concurring opinion by O’Malley.

Summary:

Patent prosecution can be forgiving when a mistake is made. However, given the right set of circumstances, a simple mistake can turn into a nightmare for both the client and attorney. This decision illustrates that a given set of circumstances can lead to a mistake which cannot be fully corrected, which leads to charges of malpractice and fraud against the prosecuting attorney as well as loss of a client. This decision also illustrates that full claim scope can be lost as a result of the mistake.


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