patent
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The Smallest of Details
We’re all generalists for one thing or another. We have specialized knowledge in some field, but the practice of law isn’t so neat that everything you do falls within your core knowledge. Those who trade in contract work may cover many different types of deals and will necessarily rely on forms to take care of […] Continue reading
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Estopped By A Wrong Decision
The Federal Circuit issued two companion decisions involving the same patent license arrangement, one that affected at least three district court decisions. Uniloc USA, Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC, which I’ll just refer to as “Uniloc,” sued Apple, Motorola Mobility and Google for patent infringement. However, Uniloc had received funding from Fortress […] Continue reading
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It’s a Really Good Idea to Get the Contract Signed
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 work […] Continue reading
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Security Interests and Patent Standing
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 assignor […] Continue reading
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Luckily, Recording a Security Interest Does Not Assign a Patent
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 interests […] Continue reading
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You Can’t Just “Re-Form” a Plaintiff
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 transferred […] Continue reading
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“Concerning the Subject Matter Hereof”
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, successors, […] Continue reading
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Don’t Be Too Agreeable
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 of […] Continue reading
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When There Are No Rights to Assign
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 to […] Continue reading
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Licenses and the After-Acquired Affiliate
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 a […] Continue reading
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