746 F.3d 1371
Fed. Cir.2014Background
- Endo sells Opana ER, and the asserted patents ('122','216','482) are at issue in this appeal and/or related case.
- Settlement and license agreements granted Roxane and Actavis licenses to certain Opana ER patents and included No Implied Rights provisions.
- The district court denied Endo’s preliminary injunction motions, ruling Endo was estopped from enforcing new patents against Actavis and Roxane.
- The '122' and '216' patents issued after the agreements, while sharing priority with the licensed provisional, are not continuations of the licensed patents.
- The court considers whether the licenses impliedly extend to the newly issued patents despite a lack of explicit grant.
- Endo appeals, and the court vacates and remands to address express and implied license questions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether there is an express license to practice the asserted patents. | Endo argues the licenses are limited to listed patents and do not cover the asserted patents. | Roxane argues the language, including § 1.16(b), covers patents that claim priority to the licensed ones. | No express license found for the asserted patents. |
| Whether an implied license exists due to legal estoppel. | Endo contends no implied license because the patents are not continuations of licensed patents and no estoppel should apply. | Appellees rely on TransCore and related cases to claim an implied license extending to the new patents. | Implied license does not arise; legal estoppel does not apply to expand the licensed scope. |
| Whether TransCore/General Protecht precedent supports an implied license to the new patents. | Endo contends that precedent supports limiting patentees from derogating rights when a license is granted for related products. | Appellees urge broad application of TransCore/General Protecht to cover the new patents. | The implied license doctrine is limited; it does not rewrite the contract or broaden the license. |
Key Cases Cited
- TransCore, LP v. Electronic Transaction Consultants Corp., 563 F.3d 1271 (Fed. Cir. 2009) (patentee cannot derogate from rights granted by a license; implied license may apply to scope but is limited)
- General Protecht Group, Inc. v. Leviton Manufacturing Co., Inc., 651 F.3d 1355 (Fed. Cir. 2011) (continuations may be impliedly licensed when same subject matter and products are involved)
- AMP Inc. v. United States, 389 F.2d 448 (Ct.Cl. 1968) (government license to use an invention can bar certain patent enforcement)
- Spindelfabrik Suessen-Schurr, Stahlecker & Grill GmbH v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 829 F.2d 1075 (Fed. Cir. 1987) (patent licenses may be written to cover specific patents or broader rights not to sue)
- New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) (priority and disclosure principles govern substantive patent scope under provisional filings)
- Ariad Pharms. Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (provisional priority and scope considerations in patent law)