A broad patent license, without language to the contrary, extends to reissue patents that are granted after the term of the license agreement.
The patentee appealed the district court’s grant of the alleged infringer’s motion for summary judgment of non-infringement on the basis of a license. The alleged infringer had entered into a broad cross-license agreement with the original owner of the patents at issue. The license agreement granted the alleged infringer rights to, “applications for which have a first filing date…prior to the expiration or termination of this Agreement…or thereafter during the term of this agreement, [the owner] owns or controls…”
The original owner assigned the patents at issue to a subsequent owner who filed broadening reissue applications with the PTO increasing the total number of claims from 77 to 378. The subsequent owner ultimately assigned the original patents and corresponding reissue applications to the patentee. The PTO granted the reissue applications well after the cross-license agreement had expired.
The court looked to 35 U.S.C. § 251 which specifically referred to reissuance of “inoperative or invalid patent[s] for the invention disclosed in the original application.” The court also noted that reissue patents cannot contain new matter and are effective for the unexpired term of the original patent. Based on the language of the statute and the broad language in the license, the court held that it was reasonable to conclude that, in the absence of language to the contrary, the parties “mutual intent at the time of contracting was that the broad and unrestricted grant of license under the [cross-license agreement] extended to any reissues thereof.”
A copy of the opinion can be found here.