IP License Strategies After Court's
Unanimous Ruling on Patent Exhaustion
CD of Teleconference with Q&A
Click here for program outline
Conducted on Wednesday, July 16, 2008
Now available on CD
Sponsored by the Legal Publishing Group of Strafford Publications
IP Teleconference Advisory Board
On June 9, in Quanta Computer Inc. v. LG Electronics Inc., the U.S. Supreme Court once again reversed the Federal Circuit on an issue involving patent owners' rights, continuing the Court's recent inclination toward limiting the scope of patent rights.
The Court's ruling firmly rejected the Federal Circuit’s departure from the doctrine of patent exhaustion enunciated almost 150 years ago: that the authorized sale or disposition of a patented article exhausts a patent owner's right to that article and such exhaustion cannot be "contracted around."
The Court further reversed the Federal Circuit in ruling that the patent exhaustion doctrine does apply to method claims. The Court also discussed "reasonable use" of a patented product and "essential features" of a patent claim, both highly relevant issues in exhaustion arguments.
Listen as our authoritative panel of IP attorneys provides an overview and analysis of the Court's decision from both the patent owner and licensor's perspective, including the likely impact of Quanta on future IP licensing arrangements. The panel will provide their perspectives on how IP owners and licensors can protect their rights through patent, as well as contract, law.
The panel included:
Allen E. Hoover, Partner, Banner & Witcoff, Chicago. He has substantial experience in intellectual property law. His licensing experience includes negotiations, transaction structuring, due diligence investigations, and client counseling.
Patricia A. Millett, Partner, Akin Gump Strauss Hauer & Feld, Washington, D.C. She co-heads the firm's Supreme Court Practice and has argued 26 cases before the U.S. Supreme Court. She filed a brief in the Quanta case.
Richard P. Gilly, Partner, Winston & Strawn, Washington, D.C. He focuses his practice in intellectual property counseling and litigation. He drafts and negotiates IP licenses and agreements and counsels on strategic intellectual property and business issues.
The panel reviewed these and other key questions:
- What methods remain available to patent owners to enforce their patents against downstream purchasers and users?
- Although patent exhaustion can't be "contracted around," are remedies available to patentees under conditional licenses or other contract law theories?
- What are the best practices for patent owners and licensees to ensure that current and future licensing arrangements incorporate the lessons of Quanta?
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