- BASICS: “An implied license merely signifies a patentee’s waiver of the statutory right to exclude others from making, using, or selling the patented invention.” Question of law. May “arise by acquiescence, by conduct, by equitable estoppel (estoppel in pais), or by legal estoppel.” Wang Labs (Fed. Cir. 01/03/97) (aff’g implied license “in the nature of equitable rather than legal estoppel, because the license arose from an accord implicit in the entire course of conduct between the parties”).
- Authorized Sale Of Product May Imply License To Patent Claim: A patentee-authorized sale of products grants an implied license to a claim if the products have “no noninfringing uses” and “the circumstances of the sale . . . ‘plainly indicate that the grant of a license should be inferred.’” An express disclaimer of a license bars such an inference. LG Elec. (Fed. Cir. 07/07/06); Helferich (Fed. Cir. 02/10/15) (license to handset makers disclaimed any implied license to content providers); see also Laserdynamics (Fed. Cir. 08/30/12) (license implied to defendant under “have made” license grant to third party, rejecting “sham transaction” argument on the facts).
- Authorized Sale Of Product Generally Implies License For All Foreseeable Uses: Hewlett-Packard (Fed. Cir. 08/12/97) (aff’g Summ. J. non-infringement for permissible repair; generally, selling a product without restriction grants the buyer an implied license under the seller’s patents for “any uses of the product to which the parties might reasonably contemplate the product will be put”).
- License To Make, Use, Sell Presumptively Includes License To Have Made: “The right to ‘make, use, and sell’ a product inherently includes the right to have it made by a third party, absent a clear indication of intent to the contrary.” Corebrace (Fed. Cir. 05/22/09) (despite explicit disavowal of right to sub-license and provision reserving “all rights not expressly granted to” the licensee, but no mention of any disclaimer of implied licenses); Carey (Ct. Cl. 01/24/64) (5-Judge) (An exclusive patent license to “produce, use, and sell” “is not restricted to production by the licensee personally or use by him personally or sales by him personally. It permits him to employ others to assist him in the production, and in the use and in the sale of the invention. Nor need he take any personal part in the production. A licensee having the right to produce, use and sell might be interested only in using the article or in selling it; in order to use it or sell it, the article must be produced; to have it produced, his license permits him to engage others to do all the work connected with the production of the article for him. Production of the article for the use of the licensee is production under the license.” No reference to contract disclaiming implied licenses.) Cf. Transcore (Fed. Cir. 04/08/09 (applying legal estoppel doctrine to imply a license to a later-issued blocking patent to avoid derogating from covenant not to sue on earlier patent despite contract’s express provision that covenant does not apply to future-issued patents: “This language may protect TransCore against broad claims that future patents generally are impliedly licensed, but it does not permit TransCore to derogate from the rights it has expressly granted and thus does not preclude a finding of estoppel.”).
- Patent License To Licensee’s “Subsidiaries” Presumptively Includes Later-Formed Subsidiaries: Where patentee “agrees to grant and does hereby grant” license to company “and its Subsidiaries,” later formed subsidiaries are licensees. Imation (Fed. Cir. 11/03/09).
- Bilateral Patent License Or Covenant Extends Impliedly To Continuations Of Patent: General Protecht (Fed. Cir. 07/08/11) (a covenant not to sue that certain products infringe certain patents impliedly licenses later continuation patents, even if they have narrower claims, as to those particular products, absent a clear indication of mutual intent to the contrary); Cheetah Omni (Fed. Cir. 02/06/20) (aff’g Summ. J., license of patent impliedly licensed continuation of continuation thereof, under doctrine of legal estoppel, whether or not claims are broader or narrower). But see Sherwin-Williams (Fed. Cir. 07/25/24) (non-precedential) (aff’g that covenant not to sue on two parent patents did not run to their continuations, distinguishing Cheetah and General Protecht as applying to bilateral covenants: “Absent a bilateral covenant, we do not think there would be a presumption that any implied license extends to any continuation patents not specifically covered by the covenant,” and, here, covenant was explicitly directed only to the two identified parent patents).
- Patent License Extends To Later-Issued Reissue Patents: “allowing the patent holder to sue on subsequent patents, when those later patents contain the same inventive subject matter that was licensed, risks derogating rights for which the licensee had paid consideration,” whether reissue or continuation. Intel (Fed. Cir. 12/17/12).