In The (Red)®

In The (Red)®

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Tag Archives: patent

U.S. Supreme Court Denies Review In Jaffe v. Samsung, Letting Stand The Fourth Circuit’s Decision Applying Section 365(n) To Protect Licensees In A Chapter 15 Bankruptcy Case

Posted in Business Bankruptcy Issues, Recent Developments
On Monday, October 6, 2014, the U.S. Supreme Court issued an order denying the petition for a writ of certiorari in the Jaffe v. Samsung case, also known as the Qimonda case. The Supreme Court let stand the Fourth Circuit’s December 2013 decision that affirmed the bankruptcy court’s order applying Bankruptcy Code Section 365(n) in… Continue Reading

Patent Reform Bill, And Its Revisions To Bankruptcy Code Section 365(n), Stalls In The Senate

Posted in Business Bankruptcy Issues, Recent Developments
Image courtesy of Matt H. Wade In December 2013 I wrote about the Innovation Act, H.R. 3309, a bill focused on patent infringement litigation and other patent law reforms that passed the House of Representatives on a bipartisan basis. My interest in the bill was because it would make the most sweeping changes to the… Continue Reading

Innovation Act, Passed By The House, Would Make Major Changes To Section 365(n)’s IP Licensee Protections

Posted in Business Bankruptcy Issues, Recent Developments
It isn’t law yet, but on December 5, 2013, the U.S. House of Representatives passed a significant patent reform bill known as the "Innovation Act." Although the focus of the legislation is on patent infringement litigation and other patent law revisions, the Innovation Act, H.R. 3309, would also make major changes to Section 365(n) of the Bankruptcy Code.… Continue Reading

When Worlds Collide, The Sequel: Fourth Circuit Rules On Section 365(n)’s IP Licensee Protections In Chapter 15 Cross-Border Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
My how time flies in protracted bankruptcy litigation. More than four years ago, as I reported back at the time, the Bankruptcy Court in the Chapter 15 cross-border bankruptcy case of Qimonda AG issued its first decision on the application of Section 365(n) in that case. After an initial appeal, a four-day trial on remand, and another appeal, last week the U.S.… Continue Reading

Seventh Circuit Bankruptcy Ruling Is Big Win For Trademark Licensees

Posted in Business Bankruptcy Issues, Recent Developments
On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, and in doing so handed a major victory to trademark licensees whose licenses are rejected in bankruptcy by trademark owners. A copy of the opinion is available through this link.… Continue Reading

When Worlds Collide: Do Section 365(n) IP Licensee Rights Work In A Chapter 15 Cross-Border Bankruptcy?

Posted in Business Bankruptcy Issues, Recent Developments
Section 365(n) And Licensee Rights. I have discussed in the past how Section 365(n) was added to the Bankruptcy Code to protect licensees of intellectual property in the event the licensor files bankruptcy. Under Section 365(n), if the debtor or trustee rejects a license, a licensee can elect to retain its rights to the licensed intellectual property,… Continue Reading

Protecting IP Rights From A Licensor’s Bankruptcy: What You Need To Know About Section 365(n)

Posted in Business Bankruptcy Issues
Many companies rely on in-bound licenses of intellectual property, especially those involving patents or trade secrets, and spend millions of dollars on research, development, and ultimately commercialization of drugs or products incorporating the licensed IP. With so much at stake, licensees frequently ask a critical question: Can our license rights be terminated if the licensor… Continue Reading

U.S. Supreme Court Shows Interest In Deciding Whether The Hypothetical Test Or The Actual Test Should Be Used To Determine If IP Licenses Can Be Assumed In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
It looks like the U.S. Supreme Court, or at least two of the Justices, is interested in deciding whether the "hypothetical test" or the "actual test" should be used in determining whether an intellectual property license can be assumed by a debtor in possession under Section 365(c)(1) of the Bankruptcy Code. That was the clear message from the somewhat… Continue Reading

Patent Law Collides With Bankruptcy: Federal Circuit Denies Bankruptcy Liquidation Trust Standing To Sue For Patent Infringement

Posted in Business Bankruptcy Issues, Recent Developments
The United States Court of Appeals for the Federal Circuit has jurisdiction over, among other areas, patent appeals, so it’s not every day that a Federal Circuit decision appears on this business bankruptcy blog. (Actually, it’s been about a year since this post discussing another Federal Circuit decision.) However, a September 19, 2007 opinion (available here)… Continue Reading

Another Court Follows The Footstar Decision On Assumption Of IP Licenses In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Intellectual property licenses continue to be significant to companies across a wide range of industries. This fact makes their treatment in business bankruptcy cases a topic of keen interest.  Can A Debtor Licensee Retain IP License Rights? When the debtor in possession is a licensee under a patent, copyright, or trademark license, a key question arises: Can… Continue Reading

New Case Addresses Whether A Security Interest In A Patent Can Be Perfected With Just A PTO Filing

Posted in Business Bankruptcy Issues, Recent Developments, The Financially Troubled Company
When a debtor grants a security interest in a patent issued by the U.S. Patent and Trademark Office (PTO), the creditor must take steps to perfect that security interest. Given that the PTO issues patents but the Uniform Commercial Code (UCC) generally governs perfection of security interests, creditors have often filed both a UCC-1 financing… Continue Reading

Assumption Of Intellectual Property Licenses In Bankruptcy: Are Recent Cases Tilting Toward Debtors?

Posted in Business Bankruptcy Issues, Recent Developments
Executory contracts present a host of interesting issues in bankruptcy cases. This is especially true when the executory contract involves a license of intellectual property (or "IP"). In the past I’ve devoted several posts to the topic, including how IP licenses are treated in bankruptcy and the unique issues presented when a trademark licensee or trademark licensor files bankruptcy.  In this… Continue Reading

New Article Examines Interplay Between Bankruptcy and Intellectual Property Law

Posted in Business Bankruptcy Issues
Peter S. Menell, a Professor of Law at the University of California, Berkeley, School of Law (Boalt Hall) and the Director of the Berkeley Center for Law and Technology, is a highly regarded expert on intellectual property law. I wanted to let you know that he’s just posted a very interesting and comprehensive article on the Social… Continue Reading

Copyrights And Bankruptcy Sales: The Importance Of Protecting Your Rights

Posted in Business Bankruptcy Issues, Recent Developments
I’ve posted in the past about bankruptcy asset sales and how parties with executory contracts need to keep track of bankruptcy cases to protect their rights. Steve Jakubowski of The Bankruptcy Litigation Blog has an entertaining and informative post about a recent Court of Appeals decision involving rappers, recording companies, copyrights, and bankruptcy that raises some… Continue Reading

Trademark Licensor In Bankruptcy: Special Risk For Licensees

Posted in Business Bankruptcy Issues
In an earlier post I discussed how a recent district court case gave trademark owners a leg up when a licensee files for bankruptcy. This begs the question: Does the advantage switch back to the licensee if the trademark owner files for bankruptcy? The answer generally, and perhaps surprisingly, is no.  Limited protection of Section 365(n). Of… Continue Reading

Infringement Claims: Is Bankruptcy The End Of The Line?

Posted in Business Bankruptcy Issues
Defending intellectual property ("IP") litigation can be expensive and, if unsuccessful, often crippling for the defendant’s business. Sometimes an accused infringer facing IP litigation will seek bankruptcy protection to invoke the automatic stay. Unless lifted by the bankruptcy court, the automatic stay will prevent further litigation against the debtor, outside of the bankruptcy claims process, for pre-bankruptcy… Continue Reading

Trademark Licensees In Bankruptcy: A Leg Up For Trademark Owners?

Posted in Business Bankruptcy Issues, Recent Developments
Apparently, until last November, no court had been called upon to resolve whether a trademark licensee in bankruptcy can assume, or assume and assign, a non-exclusive trademark license without the trademark owner’s consent.   The decision. We got the first answer to that question in a case called In re: N.C.P. Marketing Group, Inc., 337 B.R. 230… Continue Reading

Intellectual Property Licenses: What Happens In Bankruptcy?

Posted in Business Bankruptcy Issues
The major role intellectual property, or "IP," plays in our economy makes intellectual property licenses an especially significant type of executory contract.  Whether you are a licensor or licensee, it’s important to know what can happen to IP licenses when a bankruptcy is filed. Licensor in bankruptcy.  A licensor in bankruptcy (or its bankruptcy trustee) has… Continue Reading