• patent

    It’s a Really Good Idea to Get the Contract Signed

    by  • September 19, 2022 • patent, trademark • 0 Comments

    Not signing the agreement wasn’t fatal to the plaintiff’s claim, but it might have avoided the lawsuit altogether. Plaintiff Olson Kundig is an architectural firm whose owner and design principal is Tom Kundig. Defendant 12th Avenue Iron is a custom architectural metalwork fabricator owned by Stephen Marks. In 2009 Kundig and Marks decided to...

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    Security Interests and Patent Standing

    by  • May 31, 2022 • patent • 0 Comments

    Only assignees and some exclusive licensees have standing to bring a claim for patent infringement. In the category of “exclusive licensee,” there is some line drawing that goes on around the meaning of “exclusive.” Where an exclusive license is tantamount to an assignment, the exclusive licensee can sue without joining the owner. Where the...

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    You Can’t Just “Re-Form” a Plaintiff

    by  • April 27, 2020 • patent • 0 Comments

    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...

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    “Concerning the Subject Matter Hereof”

    by  • January 27, 2020 • patent • 0 Comments

    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,...

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    Don’t Be Too Agreeable

    by  • August 19, 2019 • patent • 1 Comment

    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...

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    When There Are No Rights to Assign

    by  • August 5, 2019 • patent • 2 Comments

    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...

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    Licenses and the After-Acquired Affiliate

    by  • July 1, 2019 • patent • 0 Comments

    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...

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    Patent Infringement Versus Breach of Contract

    by  • April 29, 2019 • patent • 1 Comment

    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...

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    Removing the Veil

    by  • September 10, 2018 • patent • 0 Comments

    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...

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