Express License of Patent Includes Implied License of Continuations
Written February 13, 2020
The Federal Circuit on February 6, 2020, held that the express license of a patent includes an implied license for its continuations, including continuations of continuations, because they disclose the same inventions as the licensed patent. Cheetah Omni LLC v. AT&T Servs. Inc., Fed. Cir., No. 19-1264, 2/6/20.
Cheetah Omni LLC (Cheetah) sued AT&T Services, Inc. (AT&T) for infringement of US Patent No. 7,522,836, which covers optical communication networks.
Ciena Communications, Inc. (Ciena) moved to intervene in the suit because it manufactures and supplies components for AT&T’s fiber optic systems which formed the basis of Cheetah’s infringement allegations.
Ciena said that Cheetah’s claims were barred by a patent license from a settlement agreement between them, arguing that the license implicitly covered the ‘836 patent because it explicitly covered the patent from which the ‘836 patent was a “continuation of a continuation.” A Texas federal court ruled the license covered the ‘836 patent, and the Federal Circuit affirmed.