Patent Owner Ability to Sue After Licensing Clarified on Appeal

The Federal Circuit on Tuesday narrowed the circumstances under which patent owners can lose rights to sue for patent infringement because of previous licensing activity.

The appeals court revived a pair of lawsuits, one involving counterclaims brought by a Medtronic Inc. unit and one filed by Wisconsin asphalt paving company A.L.M. Holding Co., that were dismissed on constitutional standing grounds. Judge Raymond T. Chen, who wrote both rulings, emphasized the need to clarify an area of the court’s jurisprudence that “has not always been clear, thereby creating a challenge for district courts.”

The opinions home in on when a prior ...