• Recording It Doesn’t Make It So

    by  • October 9, 2009 • patent

    I’ve read so many standing cases that it takes something different for me to pay much attention. This is one.

    Donald W. Huntley, Esq. is a patent lawyer and plaintiff Huntley, L.L.C., also known as Huntley & Associates, his firm. (His web site is www.monopolize.com, unfortunately not live right now.) EPL Technologies, Inc. retained Mr. Huntley’s firm to file a patent for it and signed an engagement letter. EPL Technologies proceeded to stiff Huntley on the bill. Huntley filed a “Notice of Equitable Claim” with the PTO. The ‘476 patent issues to EPL Technologies, which assigned it to defendant Monterey Mushrooms, Inc. Entertaining lawsuit ensued.

    Huntley sued Monterey Mushrooms for infringement of the patent, twice. After the first lawsuit was filed, Monterey Mushrooms moved to dismiss for lack of subject matter jurisdiction and lack of standing. Huntley dismissed the suit without responding to the motion. About nine months later he took his second bite. The complaint alleged that Huntley L.L.C. owned an equitable interest in the patent, nothing more.

    No heavy lifting for the court on this one. First, only legal owners of patents have standing, and Huntley was neither inventor nor assignee of the patent. Second, Huntley didn’t even have an equitable interest. The engagement letter had no language about assignment or that any interest would inure to Huntley’s benefit if EPL Technologies didn’t pay the bill. Recording the purported interest with the PTO didn’t make it so (see 37 C.F.R. § 3.54, “The recording of a document . . . is not a determination by the [PTO] of the validity of the document or the effect the document has on the title to an application, a patent, or a registration.”), nor was it signed by either EPL Technologies or Monterey Mushrooms.

    Case dismissed with a bonus; Huntley has to pay Monterey Mushrooms’ attorney fees for having to defend the same claim twice.

    Huntley, L.L.C. v. Monterey Mushrooms Inc., Civ. Action No. 08-377-GMS, 2009 WL 2992553 (D. Del. Sep. 18, 2009).

    © 2009 Pamela Chestek