Implied License

  • 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) (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).
  • 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).
  • Patent License 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).
  • 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).

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