• Posts Tagged ‘exclusive licensee’

    I Think This One Is Wrong

    by  • September 18, 2017 • trademark • 0 Comments

    Moreno v. Pro Boxing Supplies, Inc. is a precedential decision and, IMHO, clearly contrary to the Board’s controlling precedent. Opposer and petitioner Julie Moreno is the exclusive US licensee of the unregistered trademark CASANOVA for boxing equipment: Applicant and Registrant Pro Boxing Supplies is the owner of a registration for CASANOVA in standard character...

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    Suing the Patent Owner

    by  • May 2, 2016 • patent • 0 Comments

    As we all know, standing is difficult in patent cases. There are two types of “exclusive” licensees (in my view, making jurisprudence very confusing). First is the “virtual assignee” who has essentially all of the rights of the patent owner and can sue for infringement without having to join the patent owner. Second is...

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    It Doesn’t Work That Way

    by  • June 1, 2015 • trademark • 0 Comments

    When we last visited Florida VirtualSchool v. K12, Inc., the Court of Appeals for the Eleventh Circuit certified a question to the Supreme Court of Florida. As a refresher, in Florida VirtualSchool we have a state entity, FVS, enforcing a trademark. The defendants argued, successfully at the trial court stage, that FVS did not...

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    A Patent Owner Who Doesn’t Own the Patent

    by  • July 16, 2013 • patent • 1 Comment

    I’ve often written about the various categories of potential plaintiffs in patent infringement suits. Depending on what rights a licensee acquired, it may or may not have constitutional standing to bring a patent infringement lawsuit. A new case, CopyTele, Inc. v. E Ink Holdings, Inc., comes at it from a somewhat different angle —...

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    When “Exclusive Licensee” Equals “Registrant”

    by  • July 8, 2013 • trademark • 0 Comments

    Heraeus Germany makes dental products and distributes them in the United States through a sister company, plaintiff Heraeus Kulzer LLC (Heraeus America). Defendant Omni Dental Supply imports gray market products it claims are made by Heraeus Germany but intended for distribution in other countries, primarily China. In order to stop Omni, Heraeus Germany made...

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    Neither Fish Nor Fowl

    by  • June 11, 2013 • patent • 0 Comments

    Ah, here’s an interesting one. The plaintiff claims to be an exclusive patent licensee, the defendant is the United States, the case properly filed in the Court of Federal Claims, and the defendant has challenged standing. But rather than the usual situation where the court is examining whether enough rights were transferred for the...

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    The Benefit of the Bargain

    by  • April 25, 2013 • copyright, trademark • 1 Comment

    We routinely include arbitration provisions in agreements and I often wonder whether an arbitration is really any easier or cheaper than litigation. But what I didn’t realize before was how much latitude arbitrators have in what they can award, including, in this case, reforming the contract to grant a license far beyond what either...

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    Standing is a Lot Easier for Copyrights

    by  • January 16, 2013 • copyright, featured, patent • 0 Comments

    I’m curious about the different legal standards that the courts apply in patent versus copyright cases when deciding whether a plaintiff who acquired the rights through transfer has standing. Patent law seems draconian, as exemplified by Abraxis Bioscience, Inc. v. Navinta, LLC.  In Abraxis (blogged here and here), standing for a patent infringement suit...

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