This is a situation I don’t recall seeing before, but perhaps that is because it took some chutzpah to make the argument. At any rate, the decision covers some interesting legal history. The decision is about is security interests. In Raffel Systems LLC v. Man Wah Holdings Ltd. Inc., the plaintiff-patentee had granted security...
Read more →Here are the facts: Ness Stewart Irvine was a patentee. Irvine assigned his patents-in-suit to InterAD Technologies, LLC. InterAD assigned them to Zeroclick, LLC (“Zeroclick I”), the plaintiff, a Texas entity. Zeroclick I sued Apple for patent infringement. Erich Spangenberg, listed as the “governing person,” terminated the Zeroclick I entity.1 Non-party Granicus IP, LLC...
Read more →You’ve seen “integration” clauses (also called “merger” clauses) like this: Entire Agreement. This Agreement is an integrated Agreement and constitutes the entire agreement and understanding between and among the Parties with regard to the matters set forth herein and shall be binding upon and inure to the benefit of the administrators, agents, personal representatives,...
Read more →Plaintiff Tegu is a toy company. It hired defendant Vestal Design Atelier LLC to develop its first toy line. Vestal created prototypes for Tegu for blocks with embedded magnets. These are the relevant provisions on ownership of the intellectual property rights in the agreement: 2.0 Ownership of Intellectual Property. 1. Ownership. Intellectual property rights...
Read more →You’ve all seen this language before. This is from an agreement to transfer rights to a formula for nutritional products in exchange for royalties: If you can’t read the image, it says In consideration of the sum of $1.00 payable by Synergy to HealthBanc upon execution of this Agreement, HealthBanc hereby transfers and assigns...
Read more →Licenses and releases for after-acquired affiliates can be tricky things to draft. Are after-acquired affiliates also licensed to the rights? Are they licensed on a forward-going basis only, or does the license or release cure earlier infringement? It all depends on how you write it. On November 24, 2016, plaintiff Oyster Optics, LLC sued...
Read more →Something that license drafters need to think through is how a license grant works, as a permission, not a prohibition. If there is conduct that a licensor wants to prohibit, then it has to ensure that it addresses that need in the agreement. The licensor also needs to think through what remedies will be...
Read more →We’re all familiar with the concept of “piercing the corporate veil.” As a general rule, the owner of a legal entity, like the parent of a subsidiary, or the shareholder of a company, is legally insulated from the wrongdoing of the owned company. In some cases though, where the owner and the company haven’t...
Read more →I asked whether a software development agreement assigned the patent rights in the software. The district court held “yes” but the Federal Circuit disagreed. Here again is the evidence in a letter agreement between plaintiff James (through his company GSP Solutions) and defendant J2 Cloud, known as JFAX at the time: This letter shall...
Read more →Defendant J2 Cloud Services (JFAX) hired plaintiff Greg James to write some software. Unbeknownst to James, JFAX filed a patent on the software. Many years later, James sued JFAX for correction of inventorship. JFAX argued that James didn’t have standing for correction of inventorship because he had assigned his patent rights to JFAX. The...
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