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September 22, 2009


Joinder, lost profits.

The need for joinder of licensor when the exclusive license is by Field of Use is to be generally expected, see International Gamco, INC. v Multimedia Games, Inc. 504 F.3d 1273, 1279 (C.A.F.C. 2007). Not sure why Plaintiff left Harvard off.

Fettering the right to sue in an exclusive license is always risky. There are no lost profits damages if the maker/seller is not the owner/true-exclusive-licenssee:
Poly-America, L.P. v. GSE Lining Technology, Inc. 383 F.3d 1303, (C.A.F.C. 2004), (“We have held that a licensee generally may not sue for damages unless it has exclusive rights under a patent, including the right to sue.”), Intellectual Property Development, Inc. v. TCI Cablevision of California, Inc. 248 F.3d 1333, (C.A.F.C. 2001) (”The right to sue in Vaupel, which was deemed ‘particularly dispositive,’ was only subject to an obligation to inform the transferor of any impending litigation”)

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