• patent

    Patent Infringement Is a Frivolous Claim (If You Don’t Own the Patent)

    by  • September 20, 2017 • patent • 0 Comments

    There is a chicken-and-egg problem with patent ownership and a patent infringement claim. I’d guess that most patents are assigned, that is, since under US law it is the natural person who is the inventor, patents will generally be assigned to a business for exploitation. That underlying assignment, a contract, is therefore a creature...

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    When You Can’t Find the Writing

    by  • June 22, 2017 • patent • 0 Comments

    The patent, trademark and copyright statutes each provide that an assignment must be in writing. One time I asked a listserv whether that means you have to have the writing in hand. Silly me, it is an evidence question. Defendant Denis Bouboulis was an inventor of an allergy treatment device. He became a shareholder,...

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    The Successful Gambit

    by  • May 22, 2017 • patent • 0 Comments

    There’s nothing like a good procedural end run. Some people think it’s not sporting, but they are often very efficient. In re Hansen is a bankruptcy case with a history. Karl Hansen owned some US and foreign patents that he licensed to PixArt Imaging Inc. in 2008. Karl and Lisa Hansen filed for Chapter...

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    What It Takes to Get Attorneys’ Fees

    by  • January 30, 2017 • patent • 0 Comments

    This is a bit of a “duh” case from the Federal Circuit, a nonprecedential decision. The only surprising part of it is that the trial court, Judge Sparks in the Western District of Texas, didn’t impose even greater sanctions. It was quite a show of generosity. The patent-in-suit has a short chain of title;...

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    There Is Just No Way Around the Absent Patent Owner

    by  • January 3, 2017 • patent • 1 Comment

    I’m writing about an inventorship case mostly because I have to bone up before I speak at the AIPLA Mid-Winter Institute in a talk rivetingly titled “The Backlash from Mismanagement of Inventorship in Multi-Party Deals.” If you’re attending, consider Speedfit LLC v. Woodway USA, Inc. your homework assignment. The plaintiffs are an inventor, Aurel...

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    More on What Nunc Pro Tunc Means

    by  • December 5, 2016 • patent • 0 Comments

    One of my most read posts is “What Nunc Pro Tunc Means.” It means “now for then” in Latin, which is hardly much help. Extensive Google research tells me that it’s used to correct judicial orders, but that’s not what brings readers to my blog. In the IP field we typically use “nunc pro...

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    Read It Twice

    by  • November 7, 2016 • patent • 0 Comments

    Boy, is it hard to write an effective invention assignment for an employment agreement. First, under US law only a natural person can be an inventor, not a juristic person. When you have an employee whose job is inventing, the solution is to create an automatic assignment to the employer, which is generally done...

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    Dodged a Bullet

    by  • June 27, 2016 • patent • 0 Comments

    Awhile back I titled a blog “Pay Attention to This One.” People did. You can read in more detail about the facts in the appeals court opinion blogged here, but the crux is that an inventor had an oral agreement with his employer that he would be paid a bonus for his inventions in...

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