As a community service, an educational series by the

IP and Business Law Offices of Howard L. Hoffenberg, Esq.

Tour of US Supreme Court Patent Cases from 1961 to 1999

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A Fast and Easy Way to Learn the High Points of Patent Law and Related Anti-trust Law

Copyright 2010 The IP and Business Law Offices of Howard L. Hoffenberg, Esq. All Rights Reserved.

Return to Index of Tour of US Supreme Court Patent Cases from 1961 to 1999

HOLDING: (1) A preissue licensor cannot lawfully use the leverage of a patent monopoly to project royalty payments beyond the life of a patent. (2) Notwithstanding, in the event no patent issues, a de-escalating royalty in perpetuity is enforceable as compensation for being the first to introduce a new product to the market. (3) This case did not require the Court draw a line as to what constitutes abuse of the leverage of the pending application to extort an unduly high royalty should no patent issue.

ARONSON v. QUICK POINT PENCIL CO., 440 U.S. 257 (February 28, 1979)

 

FACTS: Aronson filed for a patent for a key holder which was not known to the public. Quickpoint signed a license for a 5% royalty if a patent issued and for a 2 1/2% royalty if no patent issued. After five years of sales, no patent issued and Quickpoint contended that the Patent Law pre-empted its obligation to pay the 2 1/2% royalty on a design which was now in the public domain.

Community Service and

Pro Bono

In addition to this education series, Mr. Hoffenberg gives of his time to benefit the community and contribute to the quality justice in the State of California. For many years, he served as a volunteer pro tem in the Municipal Court in traffic, landlord-tenant, small claims and short cause matters. Currently, Mr. Hoffenberg serves as a volunteer arbitrator for the Dispute Resolution Service in attorney-client fee disputes and as a quasi-volunteer mediator in the Court of Appeals.