License agreement to a patent may extend to a corresponding reissue patent
| 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.
Tags: assignment > continuation > licensing > reissue
In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality
| March 29, 2012
Promega Corporation et al. v. Life Technologies Corporation et al.
March 28, 2012
Panel: Newman, Dyk. Opinion by Dyk. Dissent by Moore.
Summary
Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations. Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.
