As a community service, an educational series by the

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

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) Licensee estoppel is abolished as analytically unsound in that (i) federal patent law requires free use of ideas in the public domain and (ii) licensees are often the only ones with economic incentive to challenge a patent monopoly. (2) A licensee is freed from paying royalties commencing at least from the time of repudiation (the Court rejected that the release occurs at the time of a court finding of invalidity.)

LEAR, INC. v. ADKINS, 395 U.S. 653 (June 16, 1969)

 

FACTS: Lear repudiated a license that, in part, covered a patented invention. Thereafter, Adkins sued in state court for breach of contract to pay roylaties and Lear defended on the grounds that the invention lacked novelty. The court applied licensee estoppel and barred Lear from challenging patent validity.

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

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.