This timely and practical session is designed for patent lawyers, IP asset managers, licensing professionals, technology transfer professionals and patent valuation experts to navigate the complexities and boundaries of patent, trade secret and technology licensing agreements.
This course examines the critical challenges of interpreting multi-tiered license hierarchies, managing downstream flow-through rights, and evaluating post-expiration royalty enforceability under doctrines such as Brulotte. This course is well-grounded in relevant case law.
Among the cases discussed are:
- Computer Sciences Corporation v. Tata Consultancy Services, 159 F.4th 429 (5th Cir. 2025)
- Lionra Technologies Ltd. v. Cisco Systems, Inc., –F.4th–, 2026 WL 160572 (Fed. Cir. 2026)
- AlexSam, Inc. v. Aetna, Inc., 119 F.4th 27 (Fed. Cir. 2024)
- Fuel Automation Station, LLC v. Energera Inc., 119 F.4th 1214 (10th Cir. 2024)
- Genentech, Inc. v. Biogen MA, Inc., 2025 WL 3679193 (N.D. Cal. 2025) appeal filed
- Johnson & Johnson v. Samsung Bioepis Co. Ltd., — F.4th —- 2026 WL 1002944 (3rd Cir. 2026)
- Cricut, Inc. v. Enough for Everyone, Inc., 2024 WL 2847946 (D. Ut. 2024)
- Analog Technologies, Inc. v. Analog Devices, Inc., 105 F.4th 13 (1st Cir. 2024)
- Ridge Corp. v. Kirk National Lease Co., 2024 WL 3617130 (Fed. Cir. 2024)
The instructor walks the listeners through a detailed breakdown of complex licensing agreements, trade secret boundaries, and patent exhaustion doctrines, providing practical red flags to watch out for as well as strategic contract drafting tips.
If you don’t know the answers to questions such as these, you really should listen to this timely webinar:
- What specific categories of confidential information did TCS improperly utilize, and for what competitive advantage?
- Why is how licensing agreements define a “Licensed Product and Service” important?
- What are the risks of including press releases in licensing agreements?
- How important is patent exhaustion in patent licensing agreements?
- What does the Genentech case teach us in terms of defining when royalty payments contractually cease?
- What is a “Combined Licensed Product and Service,” and why was it legally significant for Cisco?
- How did AlexSam successfully defend its infringement claims regarding the VISA-branded products against dismissal?
- What rule did Section 7.05 give for selling residual inventory if the agreement was terminated?
- Why did Cricut stop paying royalties in 2021?
- How did the court address the fact that Ares had to pay royalties after the CAT patents had expired?
- Why did Samsung and Janssen enter into a settlement agreement?
Course Leader
Jeff C. Dodd
Special Counsel, Hunton Andrews Kurth LLP
Jeff Dodd has more than 40 years’ experience helping companies with their corporate, securities, intellectual property and technology transactions. His client’s range in size from Fortune 50 companies to emerging businesses.
Jeff has extensive corporate, securities and corporate finance experience, including public and private securities offerings, merger and acquisition transactions, joint ventures, corporate partnering and similar arrangements, private debt and equity financing transactions (including private equity and venture capital), and regulatory, governance and compliance matters.
Jeff advises clients concerning their IP strategy and monetization programs, licensing and joint venture transactions and data security, privacy and protection issues. Jeff is the co-author of Modern Licensing Law with University of Houston Law Center Professor and former Dean, the late Ray Nimmer. The treatise covers all aspects of intellectual property licensing and has become one of the industry’s most respected publications on the topic.
