Licensing & Management of IP Assets Covenant Not to Sue. AIPLA Spring Meeting May 2, 2013 Presented by D. Patrick O’Reilley. Background to Covenants. Emotional Implication of validity Exhaustion Lemelson License to make, covenant to sell, license customer Implied License
AIPLA Spring Meeting
May 2, 2013Presented byD. Patrick O’Reilley
Contractual promise not to sue for infringing acts
Judicially enforceable agreement. Already LLC v. Nike Inc., 2013 U.S. LEXIS 602 (Jan. 13, 2013)
Equivalent to a license. Transcorev. Elec. Trans. Consults., 563 F.3d 1271 (Fed. Cir. 2009)
HilgraeveCorp. v. Symantec Corp., 265 F.3d 1336 (Fed. Cir. 2001).
License is assignable but only with permission of licensor
Does sales by covenantee require marking like a license?
Transcorev. Elec. Trans. Consults.
In re Spansion, 2011 U.S. Dist. LEXIS 82829 (D. Del. 2011), aff’d 2012 U.S. App. LEXIS 26131 (3d Cir. 2012)
Spansion promised “not to sue Apple for its use of Spansion's patented products. Accordingly, . . . the letter agreement is a license.”
365(n) applies to rejected “contract under which the debtor is a licensor of a right to intellectual property” and provides licensee right to retain its rights.
“Since the letter agreement was a license, Spansion's rejection of the license under § 365(a) triggered Apple's right to elect to retain its licensing rights under § 365(n).”
Does it runs with the patent?
A personal promise not to enforce
If covenant not to sue is a license, why have two approaches to same result?
Contract, like a license, should
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