Standing to Sue: Lessons from Recent Cases on Licensing, Assignment, and Ownership (RECORDING)

The decision to sue for patent infringement is not one to be taken lightly. Plaintiffs can be frustrated if they find out they don’t have the right to do so after incurring the effort and expense of bringing suit. Likewise, a company that thinks it has rid itself of an unneeded patent does not want to be forced to be a plaintiff in league with the “buyer” of the patent. 

Several recent cases illustrate the complexity of patent rights transfer and licensing. Our panel -- two in-house counsel in different technology sectors and a licensing expert in private practice -- will explain basic principles to help patent owners avoid pitfalls, recognizing that the devil is in the details of any transaction. Among the topics they will discuss: 

  • How questions might arise about an exclusive licensee’s right to sue. 
  • Lone Star Silicon v. Nanya (Fed. Circ. 2019), where what had been a common practice for monetizing patents resulted in the transferrer company being haled as a plaintiff into litigation.  
  • Immunex v. Sandoz (Fed. Cir. 2020) where an exclusive license did not transfer “ownership” and thus could not be used to establish double patenting. 
  • Gensetix v. Univ. of Texas (Fed. Cir. 2020) where sovereign immunity prevented a state university patent owner from being forced to join litigation by the exclusive licensee. 
  • The possible risks for patent holding companies that do not manufacture products or supply services based upon the patents they hold. If those patents are licensed to operating subsidiaries, the subsidiaries may find they lack sufficient rights in litigation to collect lost profits. 

Kenneth Corsello

IP Law Counsel

IBM

is an IP law counsel at IBM, where he focuses on drafting and negotiating patent licenses and assignment agreements. In his 15 years at IBM, he has worked on a variety of IP matters, including patent procurement, litigation, IP transactional agreements, and trade-secret related issues. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the U.S. Court of Appeals for Federal Circuit and an Associate Solicitor in the USPTO. Ken is the chair of the IPO’s Trade Secrets committee. 

Brian Kacedon

Partner

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

is a partner at Finnegan. He is an authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional (CLP). He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.

Kirby Lee

Assistant Chief IP Counsel

Ecolab

Kirby Lee is assistant chief IP counsel at Ecolab, a global leader in water, hygiene, and energy technologies and services.  Kirby previously worked at the Department of Justice and the White House, representing the U.S. government in intellectual property litigation and serving as a senior policy advisor to the IP Enforcement Coordinator. He also served as a clerk to the Hon. Alan Lourie of the Federal Circuit. Kirby is co-chair of the IPO litigation committee.

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Standing to Sue: Lessons from Recent Cases on Licensing, Assignment, and Ownership (RECORDING)
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