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November 04, 2013


I agree with the argument that it makes no sense to have opposite burdens of proofs for [patent owner optional] infringement suits for material breach versus licensee D.J. challenges to infringement of the same patent and product. But I was more upset by the absence of any precedent for the CAFC sua sponte “burden flipping” decision below. Also, by arguments that licensees get a big advantage of being able to escrow royalty payments while challenging patents without breaching the license agreement, in view of a CAFC decision to the contrary. Putting royalties in escrow [where the patent owner cannot get them, unlike a mere payment under protest] is a material breach. CORDIS CORP. v. MEDTRONIC, INC., 1985.

Dear Paul,

Thank you for the comment. Just to be clear, the escrow provision was specific to the license in the Medtronic case – no one is suggesting that all licensee are able to escrow their payments. In fact, that was one of the points that Tessera noted in arguing that the Medtronic contractual procedure for resolution was distinct from normal MedImmume-type cases.


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