Corebrace, LLC. v. Star Seismic LLC (Fed. Cir. 2009) 08-1502.pdf
Corebrace's patent covers an earthquake-resistant brace for steel framed buildings. The original rights-holder (the inventor, Benne Murthy Sridhara from Bangalore) first licensed patent rights to Star. Later, the patent rights were assigned to Corebrace.
Star's nonexclusive license from the inventor grants a right to “make, use, and sell” licensed products. The license also includes a restriction that Star may not "assign, sublicense, or otherwise transfer" its rights - except to an affiliated company. The inventor did already have a relationship with CoreBrace and reserved for that company "all rights not expressly granted" including any improvements created “by a third party whose services have been contracted."
The question on appeal is whether the license grants Star the right to use third-party contractors to manufacture licensed products for its own use. The Federal Circuit answered in the affirmative - holding that absent a clear disclaimer, a patent license includes a right to use a third party manufacturer.
The right to “make, use, and sell” a product inherently includes the right to have it made by a third party, absent a clear indication of intent to the contrary. (Following Utah law)
Patent licensing is complicated because the contracts are interpreted under state law. Here, the contract indicates that Utah law should be followed. There is not Utah decision on point. However, the Federal Circuit noted its own precedent as well as California Supreme Court cases that "have both persuasively held that a 'have made' right is implicit in a right to make, use, and sell, absent an express contrary intent. We consider that the Utah Supreme Court would therefore likely arrive at the same conclusion were it to consider the issue."Often, exclusive licensees are implicitly granted greater rights than their non-exclusive counterparts. In the non-exclusive setting - allowing the licensee to subcontract undercuts the patent-holder's rights; while in an exclusive licensee scenario, the patentee is presumed to have fully exploited its patent rights in that one contract. In this case, however, the Federal Circuit ruled that the implicit right to sub-contract manufacturing does not depend on any exclusive license status.