SOURCE: Wolf Greenfield

August 15, 2008 06:27 ET

Tech Companies Hit by Supreme Court Decision Stripping Patent Owners of Certain Royalties

Wolf Greenfield's Foster Covers Impact of Quanta Decision in New England In-House

BOSTON, MA--(Marketwire - August 15, 2008) - Hi-tech companies face the fallout of a recent Supreme Court decision that strips patent owners of rights they traditionally held, James J. Foster of Wolf, Greenfield & Sacks, P.C. writes in the current issue of New England In-House.

Its ruling in Quanta v. LG Electronics, "could have a substantial impact in industries such as the electronics and computer industries, where the largest companies, with hundreds, if not thousands, of patents, regularly cross-license each other's portfolios to avoid internecine patent litigation," writes the veteran patent litigator.

The decision -- a major expansion of the "exhaustion" doctrine -- limits the ability of patent owners to demand downstream royalties from customers of their licensees or other downstream purchasers.

"Patent owners will have to find ways to minimize its impact," Foster adds. "In particular, the decision does not prevent the use of contractual clauses or remedies to preserve or to replicate a patent owner's options."

Foster's article discusses the steps patent owners can take to blunt the impact of the Quanta decision and covers the uncertainties about how it might apply beyond the computer industry.

The article can be read in full at www.newenglandinhouse.com/gateway.cfm?id=735. New England In-House is published for in-house lawyers in New England.

Wolf Greenfield, the largest law firm in New England devoted exclusively to intellectual property law, serves companies that make everything from pharmaceuticals to software to electronics to snowboards, as well as representing academic research centers. The firm counsels clients in the areas of patents, trademarks, copyrights, designs, trade secrets, and related licensing and litigation. Web: www.wolfgreenfield.com.

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