Waterman v.

Mackenzie (1891) stated that the patentee or his assigns may, by instrument in writing, assign, grant and convey either: 1. The whole patent, comprising the exclusive right to make, use and vend the invention 2. An undivided part or share of that exclusive right; or 3. The exclusive right under the patent within and throughout a specified part of the United States

WiAV Solutions LLC v. Motorola, Inc. Holding: General Protecht v. Levitron Manufacturing Group Inc. Facts: The two parties entered into a settlement regarding patents 588 and 766 ground fault circuit interrupters (GFCIs). Plaintiff then got patents 124 and 151 after the settlement agreement. Levitron then sued General for infringement of the new patents. General said you have to sue us in NM District court and wanted injunction to alloq them to keep making GFCIs. Holding: 1) Alleged infringer had substantial likelihood of success on merits of its claim that the forum selection clause applied; 2) Alleged infringer would likely suffer irreparable harm in absence of the preliminary injunction; 3) Balance of hardships favored issuance of the preliminary injunction; and 4) Public interest supported grant of preliminary injunction. Reasoning: Bad faith by Levitron claiming infringement. eBay Inc. v. MercExchange denied injunction as remedy, instead awarded monetary damages (and compulsory license). Supreme court refused to grant an injunction after finding the patent was valid and infringed. Mandated application of traditional equitable principles (4 part test) before granting an injunction as a remedy for patent infringement.To grant an injunction, plaintiff must show: 1) that it has suffered an irreparable injury; 2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; 3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and 4) that the public interest would be disserved by a permanent injunction Critical to analysis was the fact that patent owner routinely granted licenses as such, a patent owner that grants licenses may not be entitled to an injunction since there is no harm that cannot be compensated for in damages. The result is, in effect, a compulsory license. Quanta Computer, Inc. v. LG Electronics, Inc. Facts: LG licensed to Intel patents on methods and systems for processing information (so Intel could make microprocessors). LG limited license to prohibit third parties from using the Licensed Products with other products (Intel Processors with other computer parts). Quanta

bought Intel chips and started making their own computers. LG sued for infringement and lost as the court declared there was patent exhaustion. Why was there patent exhaustion? Patent Exhaustion arose as a result of LGs license to Intel to sell products practicing the LG Patents. Intels sale to subsequent purchasers was not conditioned on any notice and there was not a restriction in contract to require combination only with Intel parts. +Sale was within the scope of the sellers rights. Therefore, if the sale had not been authorized by LG, exhaustion would not have occurred. Note: Any sale by the patent owner will be authorized, but not all sales by licensee will be authorized. Holdings: 1) Doctrine of patent exhaustion applies to method patents, and method patent is exhausted by sale of item that embodies the method (microprocessors); 2) Component computer parts that licensee (Intel) sold to third party computer manufacturer substantially embodied method patents held by patentee (LG); and 3) Licensees sale of component computer parts that substantially embodied method patents held by patentee was authorized by patent holder, and had effect of exhausting patent holders patents. SanDisk v. STMicroelectronics Facts: ST initiated talks with SanDisk about a cross license but said they did not intend to sue. SanDisk felt it was doing nothing wrong and brought ST to district court for declaratory judgment. District court said there was no jurisdiction because no case or controversy. Appealed to circuit court. Issue: Whether there was actual case or controversy. Holding: To establish actual case or controversy, accused infringer only needs to show that it has rights to engage in the accused activity without a license after the patentee has asserted his/her rights under a patent. Reasoning: By initiated talks for a license, ST implied that SanDisk was infringing. SanDisk was thus entitled to declaratory judgment. Overruled the reasonable apprehension of suit test in all contexts

MedImmune, Inc. v. Genentech, Inc. Holding: Licensee can sue for declaratory judgment that the licensed patent rights are invalid without repudiating/rejecting the license agreement. Overruled the reasonable apprehension of suit test, at least in context of licensee Drafting tip If important to Licensor, include procedural rules for a validity challenge by Licensee, including right by Licensor to possible initiate further negotiations or reexamination.

TransCore LP v. Electronic Transaction Consultations Corp. Holding: TransCore blanket covenant not to sue a manufacturer under certain patent rights unconditionally authorized the manufacturers sale of the allegedly infringing product.

TransCore barred from claiming infringement against a downstream user engaged in installing and testing product after the manufacturer had sold it to a customer. Georgia-Pacific Corp. v. U.S. Plywood-Champion Papers, Inc. Reasonable Royalty rate determination 15 factors often used as a starting point Lear v. Adkins Rule: Licensee can challenge validity of Licensors patent(s) at any time. A no contest/no challenge clause is NOT enforceable. Exceptions: 1) When a patent is assigned; 2) in settlement of litigation (res judicatta)

Epistar Corporation v. ITC and Philips Lumileds Lighting Company

Brulotte v. Thys Co. Holding: Patent owner may not require payment of license royalties beyond expiration of patent. -Unlawful per se -Some would argue that royalties prior to issuance would also be patent misuse. Aronson v. Quick Point Pencil Co. Holding: Licenses under patent applications are enforceable. Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. Facts: Mark Holodniy of Stanford developed technology for HIV testing. He signed contract with Cetus Corp. (who was bought by Roche). Issue: Whether patents on inventions that arise from federally funded research go to the university where the inventor worked. Holding: No. The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. Illinois Tool Works, Inc. v. Independent Ink, Inc. Holding: in antitrust cases alleging illegal tying arrangements, the fact that the defendant holds a patent on the tying product should not give rise to a presumption that the patentee has market power rendering the tying arrangement illegal per se. Morton Salt Co., v. G.S. Suppiger Co. (1942) Holding: Plaintiffs requirement that lessees buy salt tablets from its subsidiary was an improper attempt to obtain a monopoly over unpatented salt tablets. Court went one step further creating the patent misuse doctrine that is known today. because the Plaintiffs had used it patent to restrain competition in an unpatented product, the patent could not be enforced until the misuse was purged. U.S.M. Corp. v. SPS Technologies, Inc.

Mallinckrodt, Inc. v. Medipart, Inc.