Volume X - September 2024
Firm Updates
UIDP COMMUNITY PARTNER
We’re pleased to announce McCurdy Laud, LLC's new role as a Community Partner with the University-Industry Demonstration Partnership (UIDP) organization.
As a law firm dedicated to providing innovative legal solutions for intellectual property and technology matters, we’re proud to support UIDP's mission of fostering collaboration between academia and industry.
UIDP's commitment to practical solutions and their diverse membership of leading innovation companies and research universities aligns perfectly with our approach of delivering comprehensible work products and creating practical business solutions for our clients.
We look forward to actively engaging with the UIDP community and have highlighted upcoming events we plan on attending below.
You can read more about UIDP and other Community Partners here.
SPEAK INTO THE MIC
Founder and Principal Attorney, Catlan McCurdy, was recently interviewed by UIDP, as well as the Australian law firm, Dexterity Law, about founding the McCurdy Laud firm and the firm’s approach to client service. We look forward to sharing those with our readers in the next newsletter.
LIFE IN THE CLOUD: NAVIGATING SAAS (SOFTWARE AS A SERVICE) AGREEMENTS
As reported in our last newsletter, Minnesota CLE virtually hosted Catlan in June to teach a course on navigating SaaS contracts from the customer’s perspective. The course covered master services agreements, common exhibits such as service level agreements (SLAs), and advice on data protection standards. The course is now available online here.
Client Spotlight: Acterys
Acterys is a technology company founded in 2015 to offer a unified data platform designed to revolutionize how enterprises handle their data, planning, and reporting processes. Its core mission is to empower enterprises by providing a unified data ecosystem that breaks down information silos, streamlines operations, and facilitates more effective business management in an ever-changing world.
With users like Pepsico, Disney, and Puma it’s not hard to see that Acterys is a leader in its field. As legal counsel to Acterys, we are grateful for the opportunity to support their work in unifying enterprise data management, and we take pride in contributing to their mission of empowering businesses to make smarter decisions in an increasingly complex world.
Acterys recently released Acterys 24.1, the latest version of the product. “The launch of Acterys 24.1 heralds a transformative era in business intelligence and planning, blending the power of AI with the robust functionality of Microsoft Power BI and Excel.” Please be sure to learn more about Acterys and their offerings here.
Current Cases: C.R. Bard, Inc. v. Atrium Medical Corporation
The Ninth Circuit cleared C.R. Bard, Inc. of patent misuse allegations in a case involving the payment of royalties after a patent expired. Bard licensed two patents to Atrium Medical Corporation in 2011: a U.S. patent and a Canadian patent. The licensing agreement required Atrium to pay Bard per-unit royalties on U.S. sales of covered products until the U.S. patent expired in 2019, and on its Canadian sales until the Canadian patent expired in 2024. But the agreement also provided for a minimum royalty payment of $3.75 million per quarter, equivalent to $15 million per year, “until the last to expire of all the patents.”
After the U.S. patent expired in 2019, Atrium stopped making the $15 million-per-year minimum royalty payments. Bard filed suit in 2021, alleging Atrium breached the contract by not making the minimum payments between the expiration of the U.S. patent in 2019 and the expiration of the Canadian patent. The lower court granted summary judgment to Atrium, finding that minimum royalty provision constituted patent misuse and was unenforceable because its purpose was to compensate Bard for Atrium’s U.S. sales after the U.S. patent expired. The court therefore found that the license violated the Supreme Court’s ruling in Brulotte v. Thys Co., 379 U.S. 29 (1964), which prohibits patent owners from collecting royalties for use of a patented invention after the patent has expired.
The Ninth Circuit disagreed. The court found that the minimum royalty provision of the Bard-Atrium agreement did not violate Brulotte because, once the U.S. patent expired, “the minimum royalties applied only to use of the Canadian patent in Canada.” The court reasoned that Brulotte “does not prohibit royalties that are, by their terms, royalties for something other than use of the expired U.S. patent.” Atrium contested that interpretation, arguing that the minimum annual payment was significantly greater than the royalties that would otherwise be due for its Canadian sales, and that U.S.-focused conditions in the licensing agreement showed that the minimum royalties were meant as royalties on U.S. sales. The Ninth Circuit rejected these arguments, holding that the agreement was clear that the minimum payments were due until the Canadian patent reached its expiration, regardless of whether the $15 million minimum payment was a reasonable royalty. Ultimately, the agreement was found permissible because the payments were attributed to the Canadian patent owned by Bard, not the expired U.S. patent.
Dear Paralegal Perry
Q: I accidentally sent an email meant for my lawyer to the wrong person. Is it still protected by attorney-client privilege?
A: Oh boy, you've got yourself in the dog house! Unfortunately, this situation is a bit like dropping your favorite ball and watching it roll under the neighbor’s fence – once it's over there, it's hard to get back.
Generally, attorney-client privilege only guard dogs communications that are intended to be confidential. When you accidentally send an email to the wrong person, it could be argued that you've waived that privilege.
However, (unlike my ball from earlier) all hope isn't lost! Courts sometimes consider the intent of the sender and may still protect the communication if you took reasonable precautions to maintain confidentiality and acted promptly to remedy the mistake. Sort of like when I accidentally ate chocolate that one time…
Here's what you should do:
Don't bury your bone in the dirt – inform your lawyer immediately.
Ask the unintended recipient to delete the email without reading it.
If they've already read it, request that they keep the contents confidential and not go yipping!
In the future, always double-check your email recipients before hitting send. It's like making sure your leash is securely fastened before going for a walk – a little caution goes a long way!
Upcoming Events
UIDP Events
Catlan will be attending the UIDP Regional Assembly at the University of North Carolina at Chapel Hill on October 24th.
Foreground IP: November 13th, 1-2PM EST: Catlan will be moderating this panel discussion on sponsored research contracting based on the UIDP Contract Accords. These guiding principles cover perspectives from both university and industry partners as they deal with some of the sticky issues in contracting.
09/02 | Labor Day
10/14 | Indigenous Peoples’ Day
10/31 | Halloween
11/5 | Election Day
11/11 | Veterans Day
11/28 | Thanksgiving
Note from Catlan
New school supplies, pumpkin spice everything, Federal Circuit wins, and the sprint to close out contracts before the end of budgeting - it’s the best time of the year, personally and professionally for McCurdy Laud. We're experiencing our own kind of harvest this fall – one of ideas, innovation, and collaborative breakthroughs.
You might recall our "Innovation Time" – those Friday brainstorming sessions. Well, the seeds we've been planting are starting to bear fruit in ways that continually surprise and delight us – and more importantly, benefit our clients.
Take, for instance, one of our client’s ongoing growth. Worldwide expansion, defining new product lines, and updating existing technology introduced seemingly unmanageable legal risk. During one of our Innovation sessions, Melissa – drawing from her methodical background in accounting and practical background in start-ups – supported an unconventional approach. Merged with Catlan’s expertise in the client’s historical legal and business decisions, we’ve created a number of legal protocols and references that made the risks feel measured again. It's this cross-pollination of ideas that turns challenging legal puzzles into growth opportunities.
But we're not just collaborating within our walls. Our recent partnership with UIDP will give us the tools to approach university industry collaborations with a laser-like focus. A recent webinar on statements of work provided attendees with insight on how those documents are practically used within universities. Armed with that extra shot of practical knowledge, we’re able to not only draft better research and development agreements for our clients, we’re also able to speak the same language as the researchers and bring them and the universities they are working with closer to their actual goals. We're excited to roll this out and see how it amplifies our ability to serve our clients.
As we look ahead, I'm filled with the kind of excitement usually reserved for a new Ann Patchett novel. We're not just practicing law; we're living it and we’re enjoying it. Until next time, keep innovating, stay curious, and don't forget to enjoy the candy corn while it lasts!