Intellectual Property Report
Client Updates
Does a License to “Make” a Patented Product Inherently Include a Right to Have a Third Party Make the Product or its Components
The rapid adoption of artificial intelligence has generated a surging need for advanced chips and cutting-edge semiconductor manufacturing. The foundry model, which refers to outsourcing certain aspects of a company’s manufacturing processes to specialized third-party chip manufacturers (foundries), revolutionized the semiconductor industry by restructuring chip manufacturing. Potential disputes can arise when a company has a foundry make certain products that are covered by a patent license agreement. A grant clause of a license agreement can often grant a licensee rights to “make, use, sell or offer for sale” licensed products covered by the licensed patents throughout a defined territory, without referring to so-called “have made” rights. This can leave to ambiguity regarding whether and under what conditions the licensee possesses the right to have a third party make the licensed products on its behalf. Therefore, both the licensor and the licensee need to carefully consider whether and how to expressly address “have made” rights to avoid potential disputes.
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Disclosure of Third-Party Litigation Funding Arrangements: An Overview of Recent Decisions From Top Patent Venues
Zacharias Shepard
Recent developments concerning disclosure of third-party litigation funding arrangements in patent litigation could further impact strategic considerations for patent holders and accused infringers alike. Specifically, recent decisions and developments touching on the discoverability of third-party funding arrangements could impact litigants’ choices to bring patent infringement lawsuits in certain venues, or whether to seek transfer to a different venue. This article highlights the different approaches courts have recently taken regarding disclosure of litigation funding arrangements.
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Fast German Trademark Registrations Support BIMI Branded Email Campaigns
In May 2023, Google announced expanded support in Gmail for the Brand Indicators for Message Identification (BIMI) email specification. Brand-focused message senders must have a trademark registration, which can take time, but Baker Botts’ Branding, Advertising & Copyright (BAC) team has developed effective strategies for brands to start using BIMI almost immediately.
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How Patents Can Provide Additional Revenue Streams for Houston Innovators
Seeking patent protection can offer a substantial competitive advantage to startups looking to raise capital, especially during a venture capital downturn. Besides the protection patents can provide against intellectual property theft, they are also assets that can translate into expansion opportunities and additional revenue streams. These factors are important to institutions and individuals that invest in startups, as they may reduce downside risks to their investments and help outline a growth trajectory.
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This article was previously published in Houston Innovation Map on August 23, 2023.
Biden Administration Takes First Step in Regulating U.S. Outbound Investments into China
On August 9, 2023, President Biden issued an Executive Order (the “Order”) establishing an outbound investment review program that regulates certain U.S.-origin investments into foreign countries of concern, notably China. A White House statement accompanying the Order provided that the objective of the Order is to prevent U.S. capital and expertise from accelerating the development of sensitive technologies and products in countries that develop them to counter U.S. national security interests. The Biden administration further noted that the Order is a “narrowly targeted action” that seeks to maintain the United States’ “longstanding commitment to open investment.”
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Companies Should Exercise Caution in Describing Pending Litigation as “Without Merit”
Public companies should be cautious when describing litigation as “without merit” or meritless if they have reason to know otherwise. It could form the basis of a disclosure claim under the securities laws. A securities fraud putative class action suit in federal court against Pegasystems Inc. (“Pega”) recently survived a motion to dismiss (the ruling can be viewed here) where (1) Pega was sued for trade secret misappropriation, (2) Pega’s CEO publicly claimed the trade secret lawsuit was “without merit”, (3) thereafter, the trade secret lawsuit returned a judgment against Pega for over $2 billion in damages and (4) sufficient facts were alleged that Pega’s CEO personally participated in the trade secret misappropriation. As the court in the securities fraud litigation noted, “An issuer may legitimately oppose a claim against it, even when it possesses subjective knowledge that the facts underlying the complaint are true. When it decides to do so, however, it must do so with exceptional care, so as not to mislead investors… . An issuer may not … make misleading substantive declarations regarding its beliefs about the merits of the litigation.”
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August 2023 Intellectual Property Report Recap
In case you missed it, here is a video recap of our August 2023 Intellectual Property Report that looked at:
- Design Patent Obviousness - Federal Circuit Update
- Product of IPR Estoppel: A District Court Split
- Bringing Home the Bacon: The Federal Circuit Clarifies Threshold for Joint Inventorship
- Second Quarter 2023 Federal Circuit Law Update
- Baker Botts Webinar: The U.S. Supreme Court's Impact on IP
