• Posts Tagged ‘correcting inventorship’

    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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    Patent Ownership in Germany

    by  • July 14, 2015 • patent • 0 Comments

    Here’s an interesting little patent case involving the ownership of patents under foreign law, in this case German law. The plaintiff’s principal, Werner Schnaebele, worked in Germany for a predecessor of the defendant. He signed one employment agreement that didn’t have any provision for ownership of inventions conceived of by employees, meaning local law...

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    Consideration Can Be a Failed Expectancy

    by  • February 3, 2015 • patent • 0 Comments

    I’ve written about MemoryLink Corp. v. Motorola Solutions, Inc. in the past (recursive link). Peter Strandwitz and Bob Kniskern, owners of plaintiff Memorylink, had collaborated with defendant Motorola Solutions on the development of a handheld camera that could wirelessly transmit and receive video signals. Standwitz and Kniskern trusted Motorola Solutions with filing patent applications...

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    The Alter Ego Owns the Patent

    by  • April 15, 2013 • patent • 0 Comments

    It’s black-letter law, as black as it gets, that in the United States a patent is initially owned by the individual inventor. As stated by the Supreme Court: “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” Board of Trustees of the Leland Stanford...

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    Correcting Inventorship to Enhance Your Reputation

    by  • April 8, 2013 • patent • 0 Comments

    To have constitutional standing for a claim, the remedy must provide some redress for the claimant. In the case of correcting inventorship on a patent, it generally means the correction will provide a financial advantage, although in theory it could be a reputational advantage. But Shukh v. Seagate Technology, LLC shows that’s pretty hard...

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    Unexciting Patent Ownership Decision

    by  • July 15, 2012 • patent

    No one else seems to have reported much on this case, which is understandable – there’s not really any new ground covered.  But it is a Federal Circuit decision, so I’ll give you a brief summary. Yale Preston was an employee of Marathon Oil Co. A few days after his employment began, at the...

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    Don’t Get Greedy

    by  • May 28, 2012 • patent

    Tahir Mahmood believed that he was a co-inventor of a RIM patent.  He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology. In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694....

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    Inventing a Chemical Compound

    by  • February 18, 2012 • patent

    Plaintiff Olusegun Falana was hired to work on synthesizing chemical compounds for use in liquid crystal display screens. The compounds had to perform over a range of temperatures. Falana developed a protocol for synthesizing compounds and, using the protocol, synthesized “Compound 7.” Compound 7 had a much improved temperature range, but it still wasn’t...

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    Standing for Correction of Inventorship

    by  • October 23, 2011 • patent

    A brief primer on when an employer has standing to bring a claim under Section 256 of the Patent Act, asking that a non-party employee be added as an inventor: you’ll have to show that you will have rights to the patent you would not otherwise have, or, more specifically, that the employee had...

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    When an Assignor is Not Estopped

    by  • November 12, 2010 • patent

    Assignor estoppel is an equitable doctrine that precludes the assignor of a patent from later challenging the validity of the patent. The reach of the doctrine is limited, though, as explained in Borgwarner, Inc. v. Honeywell International, Inc.  The patents-in-suit are for a titanium compressor wheel made by investment casting. In mid-2000, Plaintiff BorgWarner...

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