IP Blog
Patent Exhaustion
Covenants Not to Sue Trigger Patent Exhaustion
The interaction of the patent exhaustion doctrine and covenants not to sue was highlighted in a recent opinion from the District of Delaware in Purdue v. Collegium. The court denied Collegium’s motion to dismiss, which was premised on Purdue’s covenant not to sue Collegium’s supplier. Purdue sued Collegium for infringing U.S. Patent Nos. 9,861,583; 9,867,784; and 9,872,836 with its pain-relief...
With License Ambiguous, Patent Exhaustion Heads to Jury
In Audio MPEG, Inc. v. Dell Inc., the Eastern District of Virginia denied summary judgment of patent exhaustion because it was ambiguous whether a license between Audio MPEG and Dell’s supplier Microsoft covered the allegedly infringing software, leaving the issue to the jury. Audio MPEG asserted that Dell’s sales of computers infringed three of its patents on encoding and decoding...
Pleading Implied License as an Affirmative Defense to Patent Infringement
An implied license is an affirmative defense to patent infringement. Because the defense is, by definition, highly fact-specific, it is not always clear what allegations are required to adequately plead the implied license defense. However, requirements for pleading the defense, e.g., under an estoppel theory, are not unduly onerous. The court’s denial of a motion to dismiss the defense in...
Patent Exhaustion Based on Foreign Sales
Sales outside the United States exhausted a patent owner’s rights in its U.S. patent, according to Multimedia Patent Trust v. Apple, Inc., No. 10-CV-2618-H (KSC), 2012 U.S. Dist. LEXIS 167479 (S.D. Cal. Nov. 9, 2012). Therefore, among rulings on summary judgment motions addressing a myriad of issues, the Court granted summary judgment to Canon on its affirmative defense of patent exhaustion...