Photo of Michael O'Shaughnessy

Michael V. O'Shaughnessy focuses his practice on patent litigation and appeals. He has handled numerous matters in a variety of technologies, including the pharmaceutical, biotechnology, medical, chemical and automotive fields. He has broad experience in all aspects of patent litigation, including conducting pre-litigation investigation and evaluation, drafting claim construction and summary judgment motions, examining and cross-examining fact and expert witnesses, and managing day-to-day litigation activities. Read Michael V. O'Shaughnessy's full bio.

Reversing long-standing Federal Circuit precedent, the United States Supreme Court has now held that a patentee extinguishes its patent rights on a product upon its sale of that product, regardless of (1) whether the patentee placed a restriction on the sale (prohibiting reuse or resale), or (2) whether the sale occurred within the United States.

Introduction

In a decision written by Judge Marsha S. Berzon, a three-judge panel of the U.S. Court of Appels for the Ninth Circuit affirmed a first-of-its-kind district court judgment relating to royalty rates for standard-essential patents (SEP). As part of the standard setting process, many standards organizations require members who hold patents necessary to implement

The Supreme Court of the United States, in a 6-3 decision, left undisturbed the rule from its 51-year-old decision in Brulotte v. Thys Co. (1964), invoking stare decisis and rejecting arguments seeking to overturn the rule barring patent royalty agreements that obligate payment of post-patent expiration royalties. Kimble v. Marvel Entertainment, LLC, Case No.