Does a patent license include related patents?

According to a recent Federal Circuit decision, the answer is “yes” if the related patent is a continuation of the licensed patent (and so long as the license agreement does not expressly say otherwise).

In General Protecht Group, Inc. v. Leviton Manufacturing Group, Inc. (Fed. Cir. July 8, 2011), the appellants sought to enforce a settlement agreement in which Leviton granted certain companies a covenant not to sue under U.S. Patents 6,246,558 and 6,864,766.  (The patents relate to ground fault circuit interrupters.)  Leviton had filed a complaint with the International Trade Commission (ITC) against the appellants.  The ITC complaint accused the infringers of violating U.S. Patents 7,463,124 and 7,764,151, which are continuations of the patents licensed under the settlement agreement.

The Federal Circuit refused to allow Leviton to proceed, noting that the same products were accused, and the same inventive subject matter was disclosed in the licensed patents.  Accordingly, the Court held:

where, as here, continuations issue from parent patents that previously have been licensed as to certain products, it may be presumed that, absent a clear indication of mutual intent to the contrary, those products are impliedly licensed under the continuations as well. If the parties intend otherwise, it is their burden to make such intent clear in the license.

Accordingly, the Court upheld a preliminary injunction against Leviton’s ITC proceeding.

Notably, the Court did not address whether the same result would have occurred if the patents were continuations-in-part, rather than full continuations.  However, the Court hinted that a different result might occur with a continuation-in-part, as the opinion noted that:

[the patent holder] cannot deny . . . that a newly asserted continuations are based on the previously licensed patents and that, by definition, the continuations can claim no new invention not already supported in the issued patents.

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