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Agreements on a Forum for Resolving Patent Disputes Generally Waive the Ability to Later Object to That Forum

USA - October 15 2020 A California district court found that a party who agreed to an enforceable forum selection clause waived its objection to improper venue and could...

Cecilia Sanabria, Amanda E. Stephenson, John C. Paul, Anthony D. Del Monaco.

Granting or Recording a Security Interest in a Patent at the USPTO Does Not Deprive the Patent Owner of the Ability to Enforce the Patent

USA - October 6 2020 A patentee did not lose the ability to bring a patent infringement lawsuit when it entered into a security interest agreement covering all of its...

Cecilia Sanabria, Umber Aggarwal, John C. Paul, Anthony D. Del Monaco.

To Avoid an Allegation that a Patent Assignor Is Estopped from Arguing that an Asserted Patent Is Invalid, the Assignor Estoppel Defense Should Be Disclosed in a Timely Fashion or the Late Disclosure Should be Substantially Justified and Harmless

USA - September 30 2020 When deciding if a party should be precluded from asserting assignor estoppel within two weeks of the close of fact discovery, a Massachusetts Court...

Cecilia Sanabria, Amanda E. Stephenson, John C. Paul, Anthony D. Del Monaco.

Implementers of Standard Essential Patents in Germany Must “Clearly and Unambiguously” Express Their Willingness to Take a License Under Fair, Reasonable, and Non-Discriminatory Terms

USA, European Union - September 15 2020 Germany’s highest court clarified the obligations of owners of standard essential patents (SEPs) when licensing their patents. They are not always...

Cecilia Sanabria, Umber Aggarwal, John C. Paul.

A U.S. Court Can Dismiss a Case Involving Patent Infringement and Breach of Contract Based on an Exclusive License Agreement to Manufacture the Patented Invention When the Parties Reside, and the Manufacturing Occurs, Outside the U.S.

USA, Canada - September 3 2020 A U.S. Court in Indiana dismissed a case involving Canadian parties having patent infringement and breach of contract claims based on an exclusive...

Cecilia Sanabria, Soniya Shah, John C. Paul, Anthony D. Del Monaco.