QUESTION
Ip question , who is right in this case and why ?
Asked on Oct 28th, 2014 on Intellectual Property - Delaware
More details to this question:
Company A and Company B entered into a license agreement, having the following provision. Company A hereby covenants not to sue Company B for infringement based upon any act by Company B of manufacture, use, sale, offer for sale, or import of the Licensed Product that occurs after the effective date of this Agreement. The covenants will apply only to patents that claim such Licensed Product. The covenants will not apply to patents that claim an apparatus or method for making or using the Licensed Product. It turned out that Company A owned Patent X that claims such Licensed Product and Patent Y that claims a method for making such Licensed Product. Company A's position is that the covenants under the agreement applies only to Patent X that claims such Licensed Product. Company B's position is that the covenants applies to Patent Y as well. According to Company A's position, Company B cannot use the method as claimed in Patent Y without acquiring a further permission
1 ANSWER
The terms of the license agreement appear somewhat contradictory. On the one hand, A agreed not to sue for the manufacture of the Licensed Product, and on the other hand, A has exempted a patent covering a method of making the Licensed Product. If viewed consistent with each other, B can manufacture the Licensed Product so long as the Licensed Product is not manufactured by the method of the unlicensed method patent. However, a problem arises if the Licensed Product can only be manufactured by the method of the unlicensed method patent, and not enough facts exist to determine whether the right to manufacture the Licensed Product implicitedly gave a license under the method patent given that it appears from the statement of facts that the existance of the method patent was not disclosed by A to B.
Answered on Oct 28th, 2014 at 12:59 PM