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Sue L. Robinson: License Exclusivity Not Solely Function of Parties’ Intent

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Earlier this year, we reported on a licensee-standing decision by Magistrate Judge Leonard P. Stark. In that decision, the Magistrate Judge recommended that a licensee operating under an agreement subject to “pre-existing nonexclusive licenses” could nonetheless pursue litigation as an exclusive licensee. In a recent order, District Judge Sue L. Robinson has, for the most part, adopted that report.

In recognizing the licensee’s standing to sue, however, the Court made explicit its thoughts on determining exclusivity:

“Defendant argues that the intent of the parties is not dispositive. I agree. Intent is but one factor a court looks to in determining whether a license agreement confers to the licensee a legally protected interest in the patent. The license at issue is an expression of plaintiffs’ intent to grant . . . an exclusive license . . . ; therefore it is a factor that weighs in favor of finding standing.”

Accordingly, it is the “entire license agreement,” not just the parties’ characterizations, that controls the inquiry.

TV Guide On-Line Inc. v. Tribune Media Services Inc., C.A. No. 05-725-SLR/LPS (D. Del. Sept. 30, 2008).

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