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Exclusive Licensor Subject To Personal Jurisdiction

Client Alert | 1 min read | 04.14.06

In Breckenridge Pharmaceuticals v. Metabolite Labs. (No. 05-1121, -1428; April 7, 2006), a Federal Circuit panel reverses a trial court's holding that it lacked personal jurisdiction over a non-resident patent holder/ licensor who was sued along with its exclusive licensee in a declaratory judgment action. The Federal Circuit also determines there are genuine disputes of material fact and vacates the trial court's summary judgment in favor of the exclusive licensee. Summarizing its own cases, the Federal Circuit explains that personal jurisdiction over a nonresident licensor is proper where a license agreement contemplates “a relationship beyond royalty or cross-licensing payment, such as granting both parties the right to litigate infringement cases or granting the licensor the right to exercise control over the licensee's sales or marketing activities.”

Because the non-patent issues in the case are intimately linked with the patent issues, the panel determines the personal jurisdiction law of the Federal Circuit, not regional circuit law, applies. In this case, the exclusive license granted the licensee the right to sue for patent infringement. Working with that exclusive licensee, the patent owner also sent letters to Florida businesses informing them of the patents. The panel holds these activities, coupled with the licensee's business in the state, adequate to provide the district court there with personal jurisdiction over the patent owner.

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Client Alert | 6 min read | 03.26.24

California Office of Health Care Affordability Notice Requirement for Material Change Transactions Closing on or After April 1, 2024

Starting next week, on April 1st, health care entities in California closing “material change transactions” will be required to notify California’s new Office of Health Care Affordability (“OHCA”) and potentially undergo an extensive review process prior to closing. The new review process will impact a broad range of providers, payers, delivery systems, and pharmacy benefit managers with either a current California footprint or a plan to expand into the California market. While health care service plans in California are already subject to an extensive transaction approval process by the Department of Managed Health Care, other health care entities in California have not been required to file notices of transactions historically, and so the notice requirement will have a significant impact on how health care entities need to structure and close deals in California, and the timing on which closing is permitted to occur....