McDermott International Legal Highlights

The ‘Super Powered’ Rule of Stare Decisis Defeats Spider Man


Paul Devinsky | Stefan M. Meisner

In a 6-3 decision, the Supreme Court of the United States left undisturbed the rule from its 51-year-old decision in Brulotte v. Thys Co. (1964), invoking stare decisis and rejecting arguments seeking to overturn the rule barring patent royalty agreements that obligate payment of post-patent expiration royalties. Kimble v. Marvel Entertainment, LLC, Case No. 13-720 (Supr. Ct., June 22, 2015) (Kagan, Justice) (Alito, Justice dissenting). In Kimble, the Court answered “no” to the question of whether parties to a patent license may agree that a licensee must continue paying royalties based on sales of products after the licensed patent(s) expire, continuing the rule that such agreements are unlawful per se.

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Federal Circuit Reverses Patent Trial and Appeal PTAB Claim Construction as Unreasonable


Michael E. Fogarty | Tomoki Tanida | Takashi Saito | Paul Devinsky

Although the US Court of Appeals for the Federal Circuit has held that the US Patent and Trademark Office Patent Trial and Appeal (PTAB) has the authority to use the broadest reasonable interpretation claim construction standard (see In re Cuozzo Speed Techs., IP Update, Vol. 18, No. 2), in the first case of its kind, the Court reversed and remanded several PTAB claim constructions on the basis that they are overly broad or unreasonable. Microsoft Corp., v. Proxyconn, Inc., Case No. 14-1542; -1543 (Fed. Cir., June 16, 2015) (Prost, C.J.).

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Court of Justice of the European Union: The Presentation of the Sales Area Design May Fundamentally be Registered as a Trademark


Dr. Boris Uphoff

Articles 2 and 3 of the trademark directive are to be interpreted in such a way that only in the form of a drawing without information regarding size and proportions is it possible for the presentation of the fittings of a sales room for goods to be registered as a trademark for services, that exist in services related to these goods, but do not themselves form an integral component in the sale of these goods, insofar as this presentation has distinctive character and there are no obstacles to registration.

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The European Union’s Highest Court Rules on Standard-Essensial Patents, Injunctions and Abuse of Dominance


Wilko van Weert | David Henry

The long-awaited ruling on the seeking of injunctions in the context of standard-essential patents encumbered by fair, reasonable, and non-discriminatory (FRAND) terms has been delivered by the Court of Justice of the European Union, in Huawei v. ZTE C 170/130. Although the judgment lays down the legal test applicable to injunctions involving standard-essential patents, and significantly clarifies the landscape that had previously been shaped by the European Commission, a number of issues remain unresolved.

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Controlling Costs in International Arbitration


Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators experienced in a domain relevant to the dispute. In principle, arbitral awards are enforceable, with only limited grounds for objection, in more than 150 jurisdictions that have ratified the New York Convention on Recognition and Enforcement of Arbitral Awards of 1958.

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