A license under a patent that is not directed to any specific claims, field of use, or other limited right will generally be interpreted to extend to the full scope of protection provided by law to the invention that is the subject of that patent. Reissuance, by statutory definition, cannot extend beyond the subject matter disclosed in the original patent, and therefore, absent any express provisions to the contrary, reissuance does not extinguish the scope of protection otherwise granted for that subject matter.
Background / Facts: Back in the 1970s, Intel Corp. and National Semiconductor Corp. were both actively developing semiconductor technology and entered into a patent cross-licensing agreement (“National Agreement” or “Agreement”). In a reciprocal arrangement, the Agreement gave Intel “non-exclusive, non-transferrable, royalty-free, world-wide licenses under NATIONAL PATENTS and NATIONAL PATENT APPLICATIONS to make, to have made, to use, to sell (either directly or indirectly), to lease and to otherwise dispose of LICENSED PRODUCTS.” After several transfers of ownership, the National Patents fell into the hands of Negotiated Data Solutions (NData) who filed several broadening reissue applications and began to assert the reissued patents against Intel customers (e.g., Dell).
Issue(s): Whether the National Agreement, which licenses National Patents to Intel, automatically extends to any reissue patents that are derived from those licensed National Patents.
Holding(s): Yes. The grant of license under the National Patents is without limitation and without reference to any specific claims. The Agreement thus evinces the parties’ intent that the license so granted extend not only to the claims then in existence but also to the full scope of any coverage available by way of reissue for the invention disclosed. To interpret the Agreement otherwise would allow the unilateral act of the licensor to place the licensee, which sought to eliminate any infringement risk and effect a global peace with the licensor for all claims in all patents, in a position of being exposed to further risk relating to the exact same inventions that were subject to the license.