We have frequently decried the actions of patent infringers (slimeballs). Now, it seems that even when they take a license, the actions of some companies may remain questionable. Discovision Associates v. Toshiba Corporation. Discovision granted a patent license to Toshiba and its subsidiaries. The license provided that “[l]icenses will be granted to additional Subsidiaries … which are not existing as of the Effective Date … upon receipt by [Discovision] of written notices … setting forth the names and addresses of such additional subsidiaries…” Toshiba gave no notice of certain new subsidiaries and took the position, in court, that “unless and until such notice is provided … a newly created Subsidiary is not covered by the License Agreement no royalties are to be paid and if said subsidiary deals in Licensed Products they are subject only to liability for patent infringement.” Need we say more?
THE LESSON TO BE LEARNED: Merely taking a license may not cause a leopard (or a slimeball) to change its spots.