Licensing Executives Society Submits Amicus Brief to Supreme Court in Quanta v. LG Electronics Case

FOR IMMEDIATE RELEASE

Contact: Al Rickard, 703-402-9713 or arickard@associationvision.com

WASHINGTON, DC, NOVEMBER 14, 2007 - What rights do patent-holders have to enforce their patents and collect royalties following sale of their products to licensees?

Can they sue for patent infringement under certain circumstances or are patent rights exhausted once sales of products containing patented technology begin?

These are among the questions asked by the Licensing Executives Society (USA & Canada) Inc. (LES) in an amicus brief filed in the Supreme Court case, Quanta Computer, Inc. v. LG Electronics, Inc.

LES is seeking clarification on these issues so that licensing executives can better anticipate the rights that patent holders have in granting licenses to use their products.

In the Quanta case, Quanta Computer and a group of other computer makers that manufacture computers for Hewlett-Packard, Gateway, and Dell charged that LG Electronics has imposed excessive licensing fees on multiple companies that use its technology in their computer products.

"Patent holders have a right to know how far their patent rights extend," said LES President Thomas A. Picone, Ph.D. "Otherwise, companies that hold licenses granted by these patent holders can profit from using the patented technology with impunity, leaving the original patent holder with no recourse for patent infringement."

In its amicus brief, LES cited a series of Supreme Court rulings in previous cases that provide conflicting views on the rights of patent holders and the responsibility of licensees.

"The courts have given conflicting signals on whether a patentee may limit the doctrine of patent exhaustion by imposing conditions on sales of patented products by licensees," LES stated in its amicus brief. "The Court should bring clarity and certainty to the issue of whether and to what extent a patentee may limit the doctrine of patent exhaustion through licensing terms."

Questions about patent rights are particularly complicated in the high technology arena, where patented technology such as that produced by LG Electronics is frequently integrated with other components, opening questions as to how far patent and licensing rights extend through the manufacturing chain.

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