Mr. Hillyar was the the former director of Gems TV (UK). Gems TV (UK) was owned by Gem TV Holdings Ltd. Gems TV (UK) owned the ‘211 Patent and intended to assign it to Gem TV Holdings Ltd. but didn’t. Gem TV Holdings Ltd. then sold Gems TV (UK) in a stock purchase agreement to The Colourful Company Group Limited. The transaction closed but then Gems TV Holdings Ltd. discovered that they had overlooked the assignment of the ‘211 patent. Mr. Hillyar executed a subsequent assignment of the ‘211 Patent to Gem TV Holdings Ltd.
This case revolves around whether or not the addendum Mr. Hillyer executed is valid. It is not. The Gems TV (UK) sale was completed by 7:13 a.m. the morning of June 18, 2010. Anthony Hillyer had previously executed a compromise agreement and resigned as a director of Gems TV (UK) effective at 6:45 a.m. that day. When Mr. Hillyer executed the addendum to assign the 211 Patent sometime after 8:00 a.m. on June 18, 2010, ownership of the 211 Patent (along with the rest of Gems TV (UK) had already been transferred to the Colourful Group, and Mr. Hillyer had resigned from his position as director of Gems TV (UK) Ltd. Mr. Hillyer clearly lacked the authority to transfer Gems TV (UK)’s intellectual property at the time he executed the addendum. The addendum is, therefore, invalid.
Defenses that the patent was still assigned the same day, that Mr. Hillyar was unaware he didn’t have the authority, that the intent of the parties was that the patent would be transferred, and that (the successor to) Gem TV Holdings Ltd. should be estopped from claiming ownership all failed and (the successor to) Gem TV Holdings Ltd. did not have standing to bring a claim for patent infringement.
America’s Collectibles Network, Inc. v. Genuine Gemstone Co., American Collectibles Network, Inc. v. Genuine Gemstone Co. (E.D. Tenn. April 23, 2015).
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