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AlexBlox asks in an earlier comment: "does publicly stating this pledge bust any opportunity to double back (i.e. it is more legally binding than just a pledge?
by dctoedt 15y ago
AlexBlox asks in an earlier comment: "does publicly stating this pledge bust any opportunity to double back (i.e. it is more legally binding than just a pledge?)"
A court might well hold a company to such a pledge, on a theory of "equitable estoppel." This type of defense to an infringement charge is always highly fact-specific; here's an example of a case in which the defense succeeded:
A patent owner accused a manufacturer of eyeglass frames---which it had previously sued for infringement---of infringing other patents. After back-and-forth correspondence---in which the manufacturer denied infringement---the patent owner went silent for three years. In the meantime, the eyeglass manufacturer expanded its marketing efforts for the products in question.
The trial court held that the manufacturer was not liable for infringement, on grounds that the patent owner's actions, in view of all the circumstances, had misled the manufacturer into thinking it would not be sued. The appeals court found no error in this holding [1]; it explained that:
"In the context of patent infringement, the three elements of equitable estoppel that must be established are:
(1) the patentee, through misleading conduct, led the alleged infringer to reasonably believe that the patentee did not intend to enforce its patent against the infringer;
(2) the alleged infringer relied on that conduct; and
(3) due to its reliance, the alleged infringer would be materially prejudiced if the patentee were permitted to proceed with its charge of infringement."
[1] Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F. 3d 1305 (Fed. Cir. 2010) (affirming summary judgment in favor of accused infringer), http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1147.pdf http://www.cafc.uscourts.gov/images/stories/opinions-orders/...
- colanderman 15y agoIn that case, what's stopping large company X from forming a shell company of one employee which performs services for X using patents held by company Y which has made such a (potentially legally-binding) pledge?