The Federal Circuit’s 2009 decision in Cornell University v. Hewlett-Packard Co., 609 F. Supp. 2d 279 (N.D.N.Y. 2009) ushered in substantial changes to the computation of reasonable royalty damages in intellectual property litigation. Following Cornell and several other cases, the courts increasingly focus on whether or not the patented feature forms the basis of customer demand for a product before allowing the entire product to be used as the royalty base.

Three years ago, I wrote in this magazine an article « Recent Developments in the U.S. and the EU : The Exhaustion Theory Is Not Yet Exhausted” (LES Nouvelles September 2009). A recent decision of the European Court of Justice in the Oracle vs. UsedSoft case has brought new food for thought to the discussion of the boundaries of the perimeter of the exhaustion theory with respect to the commercialization (importation) of products that are subject to intellectual property rights;

As is well-known to any university licensing professional, the value of an institution’s intellectual property is directly tied to successful out-licensing campaigns. But even the most harmonious licensing relationships may go south, leaving litigation as the only viable option for enforcing patent rights.

From 2006-2010, Duke University’s Center for Public Genomics prepared eight case studies examining the effects of gene patent licensing practices on clinical access to genetic testing for ten clinical conditions. One of these case studies focused on the successful licensing practices employed by the University of Michigan and the Hospital for Sick Children in Toronto for patents covering the CFTR gene and its ΔF508 mutation that causes a majority of cystic fibrosis cases.

Much has been written about the Federal Circuit Court of Appeal’s (“CAFC”) decision in the Uniloc case eviscerating the 25% Rule, but relatively little about the equally eyebrow-raising decision relating to the Entire Market Value Rule.

Collaborative Innovation (CI) enables firms to access resources needed for growth in all three of its forms: incremental growth, breakthrough innovation growth, and adjacent space growth. Collaborative Innovation for incremental growth employs familiar technology in existing market spaces, often using established suppliers and channel partners.

Mindful that nature abhors a vacuum, we wish to fill this gap by proposing a new 25% rule, technology transfer’s 25% rule. Technology Transfer’s 25% Rule states that:Technology transfer programs only succeed in commercializing twenty five percent of the invention disclosures they receive.

The nation’s investment in innovation and knowledge transfer has long been a critical factor in maintaining the nation’s global economic competitiveness. The knowledge gained through University and government research has helped develop industries and companies that are world leaders in nearly every area and is a primary contributor to the U.S. innovative capacity and economic competitiveness.

BM was a hardware behemoth in the early nineties. Today, only 20 percent of IBM’s business comes from its famed hardware unit. In the last two decades, it has made a conscious attempt to transform itself into a “solutions consulting company.” The transformation came at a time when IBM’s market share was eroding alarmingly. Apple Inc. is another organization that has redefined itself by constantly exploring new technologies and packaging them in a simplistic and intuitive manner for consumers. Apple has not only managed to survive but also to stay ahead of the competition so far. Currently, other technology companies, such as Hewitt-Packard, Google, Cisco, and Amazon, are taking the same journey of transformation.

Today we operate in a competitive global knowledge economy in which intangible assets are becoming an increasing determination of value. The federal laboratories are the research and development engine of the United States and have the capacity to further stimulate new innovations, products, companies and jobs through the creation of intellectual property, development of new technologies, and bold partnerships.

Shortly after the Nortel transaction and Google’s acquisition of Motorola Mobility in the summer of 2011, some industry observers quickly warned us that patent market was a bubble.1 The debate over the patent bubble has been going on since then.2 Some were saying that the patent bubble has already burst,3 some saying it’s about to,4 while still others keep hailing the booming patent market.5

When drafting a patent license agreement, licensors often want to include provisions prohibiting the licensee from challenging the validity of the patents involved or shifting the burden of proof for infringement, requiring that the licensee prove noninfringement. The enforceability of these provisions often turns on whether clear and unambiguous language indicates the intent of the parties. This is particularly the case for provisions seeking to bar validity challenges as such provisions may run afoul of the Supreme Court’s decision in Lear v. Adkins, which overruled the doctrine of “licensee estoppel.”