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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | USA | 10 Apr 2018

A Forum Selection Clause May Be Used to Prevent a Patent Licensee from Challenging Patent Validity at the U.S. Patent Office

A California court recently held that a forum selection clause of a license agreement was effective in preventing the licensee from challenging the…
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Knobbe Martens | USA | 5 Feb 2018

Abbvie Inc v Medimmune Limited

A party may not seek a declaratory judgment to obtain piecemeal adjudication of an issue that would not resolve the entire case or controversy...
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Banner Witcoff | USA | 30 Nov 2017

Is Infringement Required to Generate a Case or Controversy for Declaratory Judgment Jurisdiction?

Ten years ago, MedImmune successfully sought an expanded scope of declaratory-judgment jurisdiction, asking the U.S. Supreme Court to permit a suit…
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Duane Morris LLP | USA | 15 Feb 2017

Ten Years Of MedImmune: How License Agreements Changed

A decade ago, the U.S. Supreme Court’s ruling in MedImmune LLC v. Genentech Inc.[1] permitted patent licensees to seek declaratory judgments of patent…
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Womble Bond Dickinson (US) LLP | USA | 11 Aug 2016

Arbitration Saves Money And Patents In International Disputes

The advantages and disadvantages of arbitration versus litigation have been long debated. Because arbitration is a matter of contract, parties are…
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Boult Wade Tennant LLP | United Kingdom | 3 Aug 2016

English Patents Court hints at a (slightly) more flexible approach to the assessment of priority

A recent judgement of the English Patents Court has shed light on the assessment of priority (Hospira UK Limited v Cubist Pharmaceuticals LLC [2016]…
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Baker Botts LLP | USA | 18 Apr 2016

Ocean Tomo to MedImmune, licensee standing in covered business method reviews

Licensing can be a crucial part of a company's overall business strategy. Businesses often enter into licensing agreements that, at the outset, seem…
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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | USA | 17 Feb 2016

Litigation not related to target CBM patent does not create a “real and substantial controversy”

In a recent decision in Ocean Tomo, LLC v. Patent Ratings, LLC, CBM2015-00157, the PTAB ruled that a real and substantial controversy regarding…
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Hunton Andrews Kurth LLP | USA | 20 Jun 2014

Supreme Court year in review – patent cases - June 2014

The Supreme Court during its 2013-14 term decided on six patent cases, the last on June 19, 2014. These cases will have significant consequences for…
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Baker Botts LLP | USA | 6 Mar 2014

Medtronic v. Mirowski family ventures: the burden of proof of infringement in a declaratory judgment action

On January 22, 2014, the Supreme Court issued its opinion in Medtronic, Inc. v. Mirowski Family Ventures, LLC. The Court held that the burden of…
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