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ARTICLE · 01 NOVEMBER 2024

Products Utilizing Licensed Patents Are Not Necessarily Licensed

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In AlexSam, Inc. v. Aetna, Inc., No. 22-2036 (Fed. Cir. Oct. 8, 2024), the Federal Circuit found the district court erred in its evaluation of a license agreement...

United StatesIntellectual Property
Peter Rozewicz
Peter Rozewicz
Luke H. MacDonald
Luke H. MacDonald
Erik Puknys
Erik Puknys
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In AlexSam, Inc. v. Aetna, Inc., No. 22-2036 (Fed. Cir. Oct. 8, 2024), the Federal Circuit found the district court erred in its evaluation of a license agreement and failed to construe the complaint's well-pled facts in a light most favorable to plaintiff AlexSam, vacating dismissal of the second amended complaint and remanding for further proceedings.

In the district court, AlexSam alleged Aetna infringed patent claims directed to multifunctional credit card systems and networks. AlexSam had previously entered a license agreement (now terminated) with MasterCard. The district court granted Aetna's motion to dismiss, finding the accused products were licensed.

The Federal Circuit, however, disagreed and found the scope of the license agreement was narrower than the scope of the asserted claims. The Court held the license covers only transactions involving account activation or adding account value, but the asserted claims are broader, so "not every act that

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