Posts Tagged: "covenant not to sue"

Wading into Contract Law Again, CAFC Says Forum Selection Clause Also Precludes IPRs

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today issued a precedential decision holding that the U.S. District Court for the District of Delaware improperly denied Nippon Shinyaku Co., Ltd.’s motion for a preliminary injunction in the court’s misreading of the plain language of a contract’s forum selection clause. The CAFC consequently reversed the decision and remanded for entry of a preliminary injunction (PI) enjoining Sarepta Therapeutics, Inc. from proceeding with its seven inter partes review petitions (IPRs) against Nippon Shinyaku and requiring that Sarepta withdraw the petitions.

Eileen McDermott

February 8, 2022

Patent Encumbrances Can Reduce Market Value up to 100 Percent

Patent broker Brad Close notes that encumbrances can have the effect of reducing a patent’s value by up to 100 percent, practically rendering a patent valueless on the market. “If the only companies which are potential targets for a license are already licensed, then the intellectual property is essentially worthless,” Close said. “If a startup is considering entering into an agreement that would place an encumbrance upon a patent, I would advise them to be very sure that what they’re receiving in return offers adequate value and to take into consideration both their investors and the future of the business,” Close said.

Gene Quinn & Steve Brachmann

September 13, 2018

Don’t Complicate Things: Existence of a License Comes Down to the Terms of a Contract

In a case located at the intersection of bankruptcy and IP law, the Third Circuit ruled that, under the terms of a contract, Walt Disney Studios Motion Picture Production and its affiliates did not acquire a perpetual worldwide license to use patents to convert conventional films into 3D.

Paige H. Forster

February 27, 2015