• patent

    Contracts 101

    by  • January 22, 2015 • patent • 0 Comments

    Patent law heavily involves interpretation of language. In addition to the construction of the claims themselves, it has an almost unintelligible set of rules for distinguishing licenses from assignments and special rules for the language one must use to assign a patent. But in Fort. v. Innegra Technologies, LLC, we have a more interesting...

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    Having Documents Helps

    by  • October 15, 2014 • copyright, patent, trademark • 0 Comments

    I usually write about ownership issues in the context of infringement claims. But I ran across a tax case where management (or actually, lack of management) of the ownership of the intellectual property ended up creating a tax deficiency on 29.6 million dollars. In 1976 William and Patricia Cavallaro started a contract manufacturing company,...

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    It’s All About the Words

    by  • October 2, 2014 • patent • 0 Comments

    Here’s a short one. We have co-inventors, the relevant one is James McGhie. He was an inventor on a patent of which the patent-in-suit was a continuation-in-part. McGhie assigned the original patent to the predecessor-in-interest of the plaintiff, but didn’t assign his ownership of the continuation-in-part. The plaintiff argued that the assignment of the...

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    A Partner is Not Hired to Invent

    by  • September 4, 2014 • patent • 0 Comments

    We have an interesting “employed to invent” story which arose in what I suspect can be the most common of situations—two people invent a product, form a company to commercialize it, file a patent application, and then have a falling out before the patent application is even completed. Who owns the patent? In Legacy...

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    A Patent Assignment Isn’t Rescinded Just Because You Say So

    by  • July 10, 2014 • patent • 1 Comment

    In December, 2010, plaintiff Dominion Assets assigned its patents to non-party Acacia Patent Acquisition, LLC, a subsidiary of the notorious non-practicing entity Acacia Research Corp., for Acacia to monetize. Below is the operative assignment language: If you can’t read the image, it says: Effective immediately upon the date of Acceptable Completion as set forth...

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    Joinder of an Unwilling Co-owner

    by  • June 30, 2014 • patent • 0 Comments

    On the left we have a disinterested patent owner; there was a mixup about the status of an inventor, Bruce Draper, so he assigned his rights in what ultimately became the ‘321 patent to the University of New Mexico (UNM) rather than his employer, Sandia. UNM realized the mistake and assigned to Sandia “those...

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    The Role of a Board of Directors

    by  • June 23, 2014 • patent • 0 Comments

    I don’t write much about patent ownership because there just isn’t a lot of interesting stuff going on. There are two major ways it goes wrong for a plaintiff: there is a missing patent owner uncovered or the conveyance assigned less that all rights to the plaintiff. These two situations are litigated so commonly...

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