Federal Circuit Holds that Express License of a Patent Includes Implied License to Continuations

In Cheetah Omni LLC v. AT&T Services, Inc. & Ciena Corp, Case: 19-1264 (Fed. Cir. 2020), the Federal Circuit determined that a grandchild patent was impliedly included in prior license to a grandparent patent. The license at dispute was defined broadly to include “all parents, provisionals, substitutes, renewals, continuations, continuations-in-part, divisionals, foreign counterparts, reissues, oppositions, continued examinations, reexaminations, and extensions of” the ‘714 patent. Cheetah asserted that the extensive list of family members does not include the specific relationship of “a continuation of a continuation of a parent in part,” which is the relationship between the licensed ‘714 patent and the ‘836 patent at issue.  Relying on General Protecht Group Inc. v. Leviton Manufacturing Co., 651 F.3d 1355, 1361 (Fed. Cir. 2011), the Federal Circuit determined that the ’836 patent was impliedly licensed as the ‘836 patent is the grandchild of the expressly licensed ’925 patent, which is the parent-in-part of the ‘714 patent. Because the ’925 patent was expressly licensed, the license also included an implied license to a continuation of its continuation, the ’836 patent. The Federal Circuit further stated that Cheetah had an obligation to clearly state if it did not intend its license to extend to claims presented in continuation patents, which it failed to do. 

The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1264.Opinion.2-6-2020_1527805.pdf