Way back when, a long time ago, Company X granted Company Y a broad license to some of Company's X's patents. Let's call them the "Original Patents".
Company X later assigns the Original Patents to Company Z. But Company Z thinks the Original Patents didn't go far enough in making claims to the subject matter of the inventions. Company Z ergo asks the U.S. Patent and Trademark Office to reissue the Original Patents -- a process that kills the Original Patents and, for most purposes, replaces them with Reissue Patents, without broadening the scope of the inventions but perhaps making the scope of the claims wider.
Does the broad license of the Original Patents cover the Reissue Patents? Yes, the Federal Circuit held today. The panel said:
The [license] Agreement does not explicitly discuss reissue patents, bu the grant of license under the [Original Patents] is without limitation and without reference to any specific [patent] claims. The Agreement thus evinces the parties' intent that the license so granted extend not only to the claims then in existence but also to the full scope of any coverage available by way ot reissue for the invention disclosed. To interpret the Agreement otherwise would allow the unilateral act of the licensor to place the licensee, which sought to eliminate any infringement risk and effect a global peace with the licensor for all claims in all patents, in a position of being exposed to further risk relating to the exact same inventions that were subject to the license.
Intel Corp. v. Negotiated Data Solutions, Inc., No. 11-1448, slip op. 13 (Fed. Cir. Dec. 17, 2012) (applying California law). The court thus upheld summary judgment in favor of Intel on Negotiated Data's claims that Intel infringed the Reissue Patents.