In another case highlighting why it’s important for license agreements to clearly describe the parties’ intent, the U.S. District Court for the Southern District of New York recently considered a situation where a patent holder granted a third party (licensee) a covenant not to sue under certain patents. The patent holder later obtained additional patents that were related to the licensed patents as continuations. In the suit, the patent holder sued the licensee for infringement of the new patents.
The court ruled that the patent holder was not justified in bringing the suit, as the agreement did not expressly exclude continuation patents from the scope of the license. The court relied on the Federal Circuit’s 2011 decision in Gen. Protecht Group, Inc. v. Leviton Mfg. Co., Inc., which held that “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.”
The S.D.N.Y decision is ICOS Vision Systems N.V. v. Scanner Technologies Corporation, No. 1-10-cv-00604 (S.D.N.Y. Feb. 15, 2012)