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*LICENSOR’S RETAINED RIGHTS CONFERRED CONSTITUTIONAL STANDING
A.L.M. Holding Co. v. Zydex Indus. Private Ltd., 25-1317 — Yesterday in an opinion by Judge CHEN, the Federal Circuit reversed a district court dismissal of A.L.M.’s claim that Zydex infringed its patents for asphalt paving methods and compositions. A.L.M. argued it had constitutional standing despite entering into an exclusive third-party license agreement because it had retained its rights to sue, veto sublicenses, and collect royalties pertaining to the patents at issue.
The Federal Circuit agreed. A.L.M.’s rights to sue and to royalties and “substantial ongoing control” over the licensee’s right to sublicense were indicative of its exclusionary right in the patents and satisfied constitutional standing. Any infringement of the patents deprived A.L.M. of royalties and established a concrete injury in fact. A.L.M.’s retained rights were analogous to those considered in Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp. and the district court erred in limiting Mann to statutory standing.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO TO PUBLISH TOP 300 PATENT OWNERS LIST
For the seventh year in a row, IPO is partnering with Harrity Analytics to produce the Top 300 Patent Owners list, our annual list of the 300 companies that received the most U.S. patents in the previous calendar year.
Upon request, we will combine patents granted to a parent company with those granted to the parent’s majority-owned subsidiaries. If you wish to share a list of subsidiary companies whose patents should be attributed to your parent company’s total, send your list to ROCKY BERNDSEN no later than May 29. If you submitted a list of subsidiaries in previous years, you must submit a new list this year.
Please submit company names exactly as they appear on issued patents, including misspellings, variations in punctuation and spacing, etc. Patents are attributed to the company listed as the assignee on the cover of the patent.
READY TO SPEAK AT AN IPO EVENT? UPDATE YOUR IPO PROFILE TODAY
Interested in speaking at an IPO event? Update your member profile to indicate your interest in speaking as well identify areas of interest and input demographics. IPO believes that having speakers with a variety of skill sets, across a range of industries, and representing different ethnicities, will enhance its programming, in-person and virtual. By updating your member profile, you will help IPO achieve this goal.
Need help? Please watch the video for a quick demo on how to sign-up to UPDATE your speaker demographics on IPO CONNECT.
AROUND THE WORLD WITH TOBY MAK: TRAVEL INSURANCE
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I have traveled approximately 5–5.5 months per year since 2022. At this a level of travel, I have experienced many difficulties and accumulated some valuable tricks of travel. This Daily News series will share my travel tips with fellow IPO members. Please feel free to contact me about topics you would like me to cover.
The first item I’d like to share is the value of travel insurance: in particular, an annual travel insurance plan. My plan is through a credit card (included with the annual fee), and the only limitation is that I must return to Hong Kong within 90 days to be covered. In my experience, the compensation from various claims thus far has been so substantial that it could theoretically cover 150 years of purchasing such a plan separately (or in my case, the annual credit card fee).
Reflecting on these experiences, I noticed some intriguing parallels between travel insurance and patents, or intellectual property in general. Both require foresight. Securing travel insurance before each journey, or filing a patent application prior to public disclosure, is about being prepared for unforeseen circumstances that can disrupt plans or lead to business disputes involving intellectual property. The regret of not having these protections when they’re most needed is similar.
Financially, the parallels are also striking. As noted above, the compensation from my travel insurance has provided significant reimbursements that far exceed its cost. Similarly, securing a patent can lead to substantial financial gains through licensing or litigation that far surpass the initial expense of obtaining a patent. These experiences highlight the strategic value of investing in protections that offer long-term returns and risk management, whether you’re navigating airports or safeguarding innovations.