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“Fed. Circ.’s UT Immunity Ruling Places Licensing In Spotlight” (featured quotes)

July 31, 2020
Law360

In an article published in Law360 on July 31, 2020, Robert Gerstein is quoted discussing the Federal Circuit's recent decision expanding the University of Texas' sovereign immunity while letting a licensee pursue infringement litigation alone. The decision is now raising a host of questions about how private companies and public universities should approach patent licensing agreements, including when a university waives immunity and when the licensee can sue by itself.

"Depending on what happens next, and I expect there to be something that happens next, either with the full Federal Circuit or at the Supreme Court, that this could be a very important case," said Gerstein. "It could have a lot of impact, especially if the primary opinion doesn't hold up."

In the meantime, attorneys are trying to figure out when and if immunity can ever be waived and what needs to be in a contract to keep patents enforceable even without their owner in court.

Having the licensee be an exclusive licensee in all fields is key to being able to sue without joinder. If there are multiple exclusive licenses, just for different industries an invention can be used in, it's unlikely that a licensee would be able to sue without the owner. Parts of the contract outlining sublicensing rights and approval for settlements can also help prove whether the licensee has enough rights to stand on its own, Gerstein said.

Subscribers may access the full article "Fed. Circ.'s UT Immunity Ruling Places Licensing In Spotlight" which features Robert Gerstein on Law360