Los Angeles, counsel Paul Gelb co-authored “U.S. Supreme Court Decisions in Teleflex and MedImmune Increase Patent Licensee Power” for the May 2007 issue of The Licensing Journal. Within the first four months of 2007, the U.S. Supreme Court issued these two important decisions that change the rules of the chess game between patent licensors and licensees, this article discusses their rulings as well as their impact. In KSR International Co. v. TeZeflex Inc., the court made it easier to challenge a patent for obviousness, thereby encouraging current and potential licensees to bring such challenges. In MedImmune, Inc. v. Genentech, Inc. , the court encouraged patent challenges in a different way. Prior to MedImmune, if a patent licensee wanted to challenge the licensed patent, it first had to repudiate the license. Post-Medlmmune, licensees can challenge the licensed patent while maintaining good standing under the license agreement, thereby preventing an infringement countersuit by the licensor. Both KSR and MedImmune require potential licensors and licensees to reevaluate aspects of licensing contracts and strategy.
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