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Kent A. Jordan: “Field of Use” Exclusivity Argument Unsupported by License Agreement

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Third Circuit Judge Kent A. Jordan, sitting by designation, has issued an interesting decision on exclusivity as it relates to licensee standing. Despite the “semi-exclusive” language in its agreement with the patentholder, the licensee argued that it had standing to sue because the license granted it rights in an exclusive field of use.

The Court rejected that proposition:

“Even if OMI could successfully argue that a single entity extended release tramadol product encompasses a distinct field of use sufficient to provide co-plaintiff standing, and I am not convinced that it could, OMI has not shown that it in fact has an exclusive license to that field.”
The parties’ various agreements, which encompassed multiple products, evinced a “concern” that the licensed products occupied the same field. Accordingly, the licensee could not establish the exclusivity necessary to confer standing to sue.

Purdue Pharma Products LP v. Par Pharmaceutical Inc., C.A. No. 07-255-KAJ (D. Del. Dec. 3, 2008) (Jordan, J.) (redacted version).

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