Argument Preview

Another interesting case being argued next week involves Fraunhofer-Gesellschaft (“Fraunhofer”) and Sirius XM Radio Inc. (“SXM”). This case presents the question of whether the term “irrevocable” in a patent license precludes any forfeiture of the licensed rights.

Ben Yorks of Irell & Manella LLP will argue on behalf of Fraunhofer. The case addresses the ramifications surrounding the sublicensing of a previously sublicensed patent, and the particular language contained within the relevant licensing agreements. Highlighting the importance of the issue, Fraunhofer’s opening brief suggests that the district court’s decision goes against “centuries of well-established jurisprudence” by presupposing that SXM could have “obtained an entirely invincible right to use Fraunhofer’s patents even though the sublicensor itself never had that right to give.” Further, Fraunhofer’s brief suggests that SXM’s “narrow focus on the term ‘irrevocable’” ignores the larger context of the licensing contracts that “expressly allow for termination and thus preclude” SXM’s overbroad interpretation of the licensing agreement.

Mark Baghdassarian of Kramer Levin Naftalis & Frankel LLP will argue on behalf of SXM. SXM’s brief argues that “a sublicense continues, even when the principle license is terminated.” Further, SXM’s brief argues that the language of the licensing agreement permits the sublicensing to continue “unless, and only if, one of the specified termination conditions under the Sublicense were triggered.”

In reply, Fraunhofer maintains its position that the district court committed reversible error because SXM does not have a license to the asserted patents.