Property, intangible

a blog about ownership of intellectual property rights and its licensing

Why There Are Nonprecedential Decisions

When we last visited Taylor v. Taylor Made Plastics, Inc., the trial court held that the spouse of the inventor acquired a legal ownership interest in the inventor’s patent in the divorce. I was a bit surprised; the language in the divorce was this:

The Court finds that the proceeds from the production of the patents shall be split 60% to the Wife and 40% to the Husband ….

I thought the language “proceeds from the production of the patents” was pretty clearly an income interest, not legal ownership. But the district court dismissed the husband’s patent infringement suit for lack of standing because the wife was not a co-plaintiff.

Taylor appealed and we have a nonprecedential per curiam opinion from the Federal Circuit that’s pretty much a “huh?” Here’s the entire Discussion portion of the opinion (citations omitted):

The long-established rule is that a suit for patent infringement must join all co-owners of the patent as plaintiffs. If any co-owner should refuse to join as a co-plaintiff, the suit must be dismissed for lack of standing. But a party is not co-owner of a patent for standing purposes merely because he or she holds an equitable interest in the patent. Rather, a co-owner must hold legal title to the patent. Legal title vests initially in the inventor, and passes to others only through assignment or other effective legal transfer.

Before the district court, James T. argued that Mary T. was not the owner of legal title to the ’566 patent, but he does not press that argument on appeal. Instead, James T. argues in his brief that the district court erred in dismissing the complaint because Mary T. either (1) joined the suit as a co-plaintiff by participating in mediation or (2) waived participation in the suit by entering an agreement with James T. These arguments need not be discussed in detail, as they are stated only in a cursory fashion without any supporting facts. It is enough to note that James T. has the burden of establishing standing, and that he has failed to carry that burden.

Presumably Taylor had a good reason to give up on his argument that his wife had what was indeed, as the Federal Circuit appears to suggest, only an equitable interest in the patent. Whatever.

Dennis Crouch at Patently-O with some more of the back story here.

Taylor v. Taylor Made Plastics, Inc., No. 2014-1212 (Fed. Cir. May 9, 2014).

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