TILT AND TUMBLE LICENCE FIGHT
(This is an archived case summary)
The Court considered whether a licence authorizing the use of a patent to make and sell a product protected a third party purchaser from liability for patent infringement for that same use. Jacobs, the owner of a patent related to a tilt-sensitive video game controller, alleged that Nintendo's “Kirby Tilt and Tumble” infringed his patent. The technology for Nintendo's tilt-sensitive controller was supplied by a company called Analog. Jacobs had granted Analog an irrevocable licence which included (1) the right not to be sued for infringement of the patent; and (2) the right to”sell...micromachined accelerometers for use in tilt-sensitive control boxes”. The court said that the clause granting Analog the right to sell its accelerometers for use in tilt-sensitive control boxes barred Jacobs from interfering with that right by prohibiting Analog's customers from using the accelerometers for the authorized purpose. The Court said that the licence gave Analog's customers an implied sublicence to use Analog's accelerometers to make, use and sell tilt-sensitive control boxes that infringed Jacobs patent without interference by Jacob.
The case is available here.
Jordan Spencer Jacobs v. Nintendo of America, Inc.