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Asaf Naymark

is an Associate at Shaked & Co. and provides legal guidance and representation to the firm’s U.S. and Israeli clients. Prior to joining the firm he worked in the international department of Yigal Arnon & Co. Asaf was raised in Miami, Florida.

Recent Articles by Asaf Naymark

Covenant Not to Challenge in a Patent License Does Not Bar a PTAB Review

Covenant Not to Challenge clauses are common in patent licenses, including licenses that are part of post-litigation settlements. clause is seen as a benefit bargained for under a license agreement and constitutes part of the consideration obtained by the licensor for the license. The intended effect of such a clause is to allow the licensor to make an estoppel argument in the event that licensee does challenge the patent, in spite of its agreement not to do so. However, the PTAB thus concluded that without an express grant from Congress, it did not have the authority to recognize contractual estoppel as a bar to an inter partes review.