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Cheetah Omni LLC v. AT&T Services, Inc.

Patent License Presumptively Conveys Implied License to Continuations

Cheetah Omni LLC v. AT&T Services, Inc., __ F.3d __, 2020 WL 578935 (Fed. Cir. Feb. 6, 2020) (LOURIE, Bryson, Chen) (N.D. Tex.: Kinkeade) (3 of 5 stars)

Fed Cir affirms dismissal of Cheetah’s infringement claims. Cheetah’s patent relates to optical communication networks. The district court correctly determined that Cheetah’s pre-suit grant of a license to a patent that was an ancestor of the asserted patent included an implied license to the asserted patent. Discussing AMP, 389 F.2d 448 (Ct. Cl. 1968), TransCore, 563 F.3d 1271 (Fed. Cir. 2009), and General Protecht, 651 F.3d 1361 (Fed. Cir. 2011), the opinion reasons that because the license conveyed the ancestor patent, a presumption exists that continuations are licensed as well. Thus Cheetah’s pre-suit license “also include[d] an implied license to a continuation of [that patent’s] continuation, the [asserted] patent.” Op. at 8. That the continuation might have narrower claims, or address a different invention, than the ancestor did not require a different result because “the same inventive subject matter was disclosed in the expressly licensed patents.” Id. Had Cheetah intended otherwise, it could and should have made that clear in the license. That the asserted patent already existed at the time of the license, and was not named in the license while other patents were, did not require otherwise, particularly because some patents were addressed only by “broad categories” in this license, and not by number.

KEYWORDS: MOTION TO DISMISS; CONTINUATION; IMPLIED LICENSE; EXPRESS LICENSE