License Disputes

Overview

The attorneys at Robins Kaplan LLP have achieved victories on both sides of the courtroom in complex, high-stakes licensing disputes involving the intersection of contracts and intellectual property. Our plaintiff successes include a $320 million judgment for the licensor in a breach-of-contract dispute over intellectual property rights. Successes for defendants have included complete defense verdicts for licensees in disputes with hundreds of millions of dollars and attorney’s fees at stake. Because of these and other client results, we have earned a reputation as a premier firm to handle license disputes when the stakes are at their highest.

Our deep litigation and trial experience provides the lens through which we create and maximize commercial advantage for our clients. This vision extends beyond the courtroom. We also help clients develop a superior bargaining position in negotiations over technology by analyzing existing license agreements to inform strategic business decisions. When the rights to use and profit from high-value intellectual property have or may become contested, our courtroom accomplishments, results-driven advocacy, and keen strategic insights make Robins Kaplan a go-to firm for complex IP license dispute representation.

Experience

Our complex license disputes experience spans traditional court, arbitration, and mediation venues, and, whatever the forum, we provide persuasive advocacy that helps explain, protect, and demonstrate our clients’ valuable interests. Our experience includes:

IP disputes over the scope of royalty obligations in technology agreements
FRAND disputes involving standard-essential patents
Software license disputes
Renegotiation of established royalty obligations following the release of new products
Analysis of existing license obligations and counsel regarding ability to challenge validity of licensed patents at PTAB

Clients and Industries

We have served clients across industries and litigated disputes involving a wide range of technologies, including:

Biotechnology
Computer Hardware, Software, and Peripherals
Consumer Electronics
Entertainment and Media
Food and Beverage
Health and Life Sciences
Manufacturing
Medical Devices
Retail

Selected Case Results*

Represented Celador International, Ltd. in a dispute over profits from the highly successful television show "Who Wants to Be a Millionaire?" A federal jury awarded Celador, the creator of the show, $270 million in damages after finding that Disney's subsidiaries, ABC Television, Buena Vista Television, and Valleycrest Productions had breached their profitsharing contract with Celador and their duty to deal fairly and in good faith with Celador. On September 27, 2010, the U.S. District Court for the Central District of California awarded $50 million in prejudgment interest to Celador, bringing the total to $320 million in damages. On December 3, 2012, the Ninth Circuit Court of Appeals affirmed the entire verdict and awarded the plaintiff its costs on appeal. On February 26, 2013, the Ninth Circuit Court of Appeals unanimously denied Disney’s petition for rehearing and review of the $320 million jury verdict and judgment in favor of Celador.

Trial counsel in Megdal Associates LLC v. La-Z-Boy, Inc, (S.D. Fla. 2016), a case in which a federal jury in Fort Lauderdale awarded our client Megdal Associates $5.7 million for breach of a technology license agreement.

Medtronic Inc. v. Boston Scientific Corp. et al.: Achieved complete victory for Medtronic, Inc. in a dispute that Medtronic’s cardiac resynchronization devices infringed certain claims of U.S. Patent Nos. RE38,119 and RE39,897. After a bench trial, a Delaware district court held that Mirowski Family Ventures, as the patentee, bore the burden of proving infringement and failed to meet that burden, entering a judgment of non-infringement on behalf of Medtronic. On appeal, the Federal Circuit reversed the district court on the burden of proof issue and held that Medtronic, as the licensee, bore the burden of proving non-infringement. Medtronic filed a petition for certiorari to the U.S. Supreme Court. The Supreme Court granted the petition and reversed the Federal Circuit, holding that the patentee always bears the burden of proof, even where the licensor cannot counterclaim for infringement because of the existence of a license agreement. On remand from the Supreme Court, the Federal Circuit affirmed the district court’s finding of non-infringement for Medtronic, awarding Medtronic a complete victory in the case.

Represented a software developer in a confidential arbitration against a clothing retail company involving alleged breaches of a software license and development agreement.

Represented Global diversified technology and financial services company in a high-stakes patent infringement and license-related action involving GE’s healthcare division and contrast-enhanced magnetic resonance angiography technology. The case settled prior to trial.

Imation Corp. v. Koninklijke Philips Elec. N.V (D. Minn.): Represented Imation in a patent infringement and contract matter where Philips alleged infringement of eight patents related to CD storage technology. While awaiting a claim construction ruling, the district court entered judgment against Imation pursuant to Rule 54(b), holding that Imation was not licensed under a cross-license agreement. The Federal Circuit reversed and ordered judgment for Imation on the question of whether certain entities formed or acquired later qualify as "subsidiaries" that could benefit from Imation's patent license with Philips. The case settled shortly thereafter.

Louis Vuitton Moet Hennessy v. Phillips Beverage Company: Obtained a complete defense verdict and an award of fees for defendant in $100 Million international arbitration proceeding brought by French multi-national seller of luxury goods arising from alleged breach of trademark license agreement.

Represent a Japanese clock manufacturer in copyright litigation and licensing negotiations with various music publishers concerning IC chips in clocks; litigation settled and license negotiations are ongoing.

Trial counsel for performing rights organization in 2-week trial involving copyright and licensing litigation against music users on the Internet and wireless devices.

Represented an established New York City-based photographer in copyright and licensing disputes.

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.