Patent license covers reissued patents, Federal Circuit rules

The United States Court of Appeals for the Federal Circuit (the US appellate court responsible for patent appeals), in the case, Intel Corporation v. Negotiated Data Solutions Inc., has issued an interesting decision regarding the scope of a patent cross license.

In 1976, Intel and National Semiconductor Corp. entered into viagra online generic a patent cross-licensing agreement that gave Intel "non-exclusive, non-transferable, royalty-free, world-wide licenses under NATIONAL PATENTS and NATIONAL PATENT APPLICATIONS to make, have made, to use, sell, ... and to otherwise dispose of LICENSED PRODUCTS", for the lives of the patents. The agreement defined NATIONAL PATENTS as "all classes or types of patents and utility models of all countries of the world, applications for which have a first filing date in any country prior to the expiration or termination of this Agreement, in respect of which, as of the EFFECTIVE DATE, or thereafter during the term of this Agreement, NATIONAL owns or controls ...."
 
The agreement extended reciprocal licenses to Intel. After three extensions, the agreement expired in 2003.
 
The National patents at issue were assigned to two different entities, and ultimately to Negotiated Data. Along the way, three of the patents were re-issued to substantially broaden their claims (from 77 to 378 claims). Then, after the the agreement had expired, the patents were re-issued again.
 
In 2006, N-Data sued Dell, Inc., one of Intel's customers. In response, Intel filed a complaint seeking declaratory judgment that the re-issued patents derived from the original patents licensed to Intel (and hence its customers) under the 1976 patent cross-license.
 
N-Data argued that the re-issued patents should be considered as separate and new, in that they were issued directly to N-Data after the agreement had expired.  The Federal Circuit, in a well-reasoned opinion, disagreed:
 
The National Agreement does not explicilty discuss reissue patents, but the grant of license under the National Patents is without limitation and without reference to any specific claims. The Agreement thus evinces the parties' intent that the license so granted extend not only to the claims then in existence but also to the full scope of any coverage available by way of reissue for the invention disclosed. To interpret the Agreement otherwise would allow the unilateral act of the licensor to place the licensee, which sought to eliminate any infringement risk and effect a global peace with the licensor for all claims in all patents, in a position of being exposed to further risk relating to the exact same inventions that were the subject of the license.
 
This case is instructive in that parties to a patent license should make clear that the license at issue extends to not just the originally-issued patents, but to all continuations and reissuances as well.

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