Life After Quanta and MedImmune: What You Need to Know About Patent Exhaustion and Licensing Now

Two recent Supreme Court decisions, Quanta Computer and MedImmune, have changed the landscape for patent licenses. License agreements may affect the ability to limit or pursue additional royalties from downstream users of patented technology. Merely approaching a party to start license negotiations can open the courthouse doors to a declaratory judgment, resulting in unwanted legal fees and jeopardizing the patent’s validity or enforceability

The panel addressed the real-world considerations facing intellectual property owners, licensors, licensees, and technology users in the aftermath of these decisions.

Presenters:

• George C. Best, Partner and member of Foley’s Intellectual Property Litigation and Appellate Practices
• Stephen P. Fox, Of Counsel to Foley’s Intellectual Property Department and Electronics Practice
• Doug Kundrat, Vice President, Deputy General Counsel & Director of Intellectual Property for Agilent Technologies, Inc.  

Key topics included:

• New strategic considerations for patent licensing: perspectives of different industry groups
• Drafting licenses and analyzing patents to minimize exhaustion or to use exhaustion to protect downstream customers
• Using indemnity provisions in licenses and commercial agreements to your advantage
• Addressing MedImmune issues: Can you start licensing negotiations without risking a lawsuit?
• Using Quanta and MedImmune offensively or defensively in litigation

For questions about this program, please contact Zulaikha Rahim at zrahim@foley.com.