Contact: Charles Barquist, Karen Hagberg, Paul Jahn, or Alan Cope Johnston
Lawyers working in the patent field conventionally have been sorted into three broad categories: prosecution specialists who
engage in the procurement of patents, transactional lawyers who structure and negotiate business transactions that have a
significant intellectual property aspect, and litigators who represent clients in judicial proceedings involving patent infringement
disputes. For many years, Morrison & Foerster has practiced actively in all of these areas. In recent years, however, a fourth
area of concentration has emerged: "adversarial patent licensing negotiations," which partake of some of the elements of each
of the above three specialties.
Many companies have observed a fairly sharp separation between licensing negotiations, on the one hand, and litigation, on
the other. They have tended to handle licensing negotiations on their own, using licensing executives or in-house lawyers.
Outside counsel played a role with respect to patent procurement and the rendering of legal opinions on validity and infringement.
In terms of negotiation, however, outside counsel were called upon only after efforts at negotiation had failed and litigation
was imminent.
Some companies began to see that adversarial patent licensing negotiations - as contrasted with friendly licensing as part
of business transactions - had many of the same qualities as settlement of pending litigation. As patents became more and
more important, high technology companies began to realize that outcomes in licensing negotiations were affected by the predicted
outcomes in litigation if the negotiations failed. Accordingly, these companies began to call on their litigation counsel
to play a role further "upstream" in the negotiation and dispute resolution process.
The key wisdom of this new approach is that one of the best uses of skilled advocates is to prevent, rather than conduct,
litigation. If adversarial patent licensing negotiations are essentially a settlement of litigation that has not yet been
brought, and if the key factor in the settlement calculus is the making of and advocating reliable predictions about what
would happen if litigation ensues, then it should be possible to use lawyers who conduct such litigation effectively in an
effort to settle.
The adoption of this rationale by many of our clients has resulted in Morrison & Foerster's developing an active, diverse
practice in adversarial patent licensing negotiations. The types of negotiations conducted by members of the firm cover a
broad range - from comprehensive cross-licenses of hundreds or thousands of patents between large, multi-national electronics
companies, to negotiation of settlements with individual inventors conducting licensing campaigns on an industry-wide basis,
to highly specialized bilateral negotiations over a single patent. The issues involved in such negotiations have ranged from
traditional validity and infringement evaluations, to issues concerning the measurement of damages and reasonable royalties,
to issues from legal specialties other than intellectual property - such as antitrust - that sometimes affect licensing terms
and strategies.
The industries in which members of the firm have conducted these negotiations cover an equally broad range - semiconductors
and electronics, medical devices, biotechnology, computer hardware and peripheral devices, software, automated office equipment,
chemical and industrial processes, vehicle parts and components, and many others. In terms of geography, the clients for whom
we have conducted such negotiations are situated all over the world, with many in Japan and Europe, several in Australia and
others throughout the United States and North America.
Perhaps the most significant measure of the firm's prominence in adversarial patent licensing negotiations internationally
is the stature of the major adversaries against whom we have negotiated on behalf of our clients. These include IBM, AT&T,
Abbott, Texas Instruments, Genentech, St. Jude Medical, Samsung, Smith & Nephew, Pitney Bowes, Unisys, Lucent, British Telecom,
Motorola, Jerome Lemelson, and many others.
Representative Matters
- Counsel to Yahoo! in its agreement with Miva for a license of Yahoo! patents for Internet search. The agreement was part of
a settlement of a patent infringement lawsuit and requires Miva to pay ongoing royalties for the license.
- Counsel for Nikon in its patent cross-license negotiations with ASML and Zeiss covering lithography equipment as part of a
global settlement of pending litigation.
- Counsel for Altera in the negotiation of its cross-licenses with Xilinx and Lattice Semiconductor relating to programmable
logic devices.
- Counsel for Fujitsu in a cross-license settling its dispute with Samsung regarding plasma display panels (PDPs).
- Counsel for EchoStar in its negotiations with Gemstar for a license to Gemstar’s electronic program guide patents and related
technology and to settle all outstanding litigation between the two companies.
- Counsel for Chiron in its negotiations with Roche relating to patent coverage and royalties due for use of Chiron’s blood
screening patents.
- Counsel for the University of California in structuring a contractual framework for resolving a complex inventorship and licensing
dispute with Wellstat Therapeutics and Repligen.
- Counsel for Fujitsu in responding to the licensing demands of James White regarding hard disk drive (HDD) components.
- Counsel for several major clients in separate negotiations with Ronald Katz for a license to Katz’s extensive portfolio of
patents on interactive voice response systems.
- Counsel for Tokyo Ohka Kogyo in its separate negotiations with Dow Corning, IBM, DuPont, and Ashland relating to patents on
photoresist and strippers.
- Counsel for Hitachi in its license negotiations with Discovision Associates relating to patents on hard disk drive (HDD) technology.
- Counsel for Konica Minolta in the negotiation of a global patent cross license agreement between Konica Minolta and Xerox
and Fuji Xerox.
- Counsel for Fujitsu in its patent license negotiations with Unova.
- Counsel for Hitachi in negotiations to amend its enterprise patent cross-license agreement with IBM in light of Hitachi's
acquisition of IBM's hard disk drive operations.
