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.
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.
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.