• Check the Corporate Records – Every Time

    by  • September 30, 2010 • patent

    Litigation is expensive and the last thing you need is unnecessary motion practice.  On June 16, 1998 an inventor employed by patent owner Tri-Star executed an assignment to “Tri-Star Electronics International, Inc., its successors, legal representatives and assigns,” an Ohio corporation. On September 9, 1999, he executed another assignment to Tri-Star as an Ohio corporation.  Problem?  A few days after the first assignment, Tri-Star was changed through merger to a California corporation. Here comes the motion to dismiss for lack of standing.

    No one could believe that the inventor didn’t mean to assign the patent to his employer, no matter where the company was formed.  But in litigation, any chink in the armor has to be defended.  Luckily for Tri-Star, Ohio law

    instructs that the primary objective of contract interpretation “is to give effect to the intent of the parties, which we presume rests in the language that they have chosen to employ.”

    The parties – the inventor and Tri-Star – intended that he assign the patent to the currently existing corporation and the word “successor” gave effect to the intent. District court denial of motion affirmed.

    Tri-Star Elecs. Int’l, Inc. v. Preci-Dip Durtal SA, No. 2009-1337 (Fed. Cir. Sep. 9, 2010).

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