patent
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Check the Chain of Title, Please
Folks, really. Check the assignment documents before you file the lawsuit, don’t assume the face of the patent is correct: At some point soon after PBS Inc. filed its motion to amend, it was discovered that PBS Ltd., not PBS Inc., is the assignee and owner of the ‘651 and ‘039 patents. PBS Inc. is… Continue reading
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Does a “Beneficial” Patent Owner Have Standing?
Often there is the concept of “beneficial owner” in intellectual property-related transactional documents. My limited experience is that the concept is useful for tax purposes, i.e., one can have legal title in one company and “beneficial” ownership in another in order to create a favorable tax position. This presents some interpretive problems in the United… Continue reading
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What Does a Patent “Cover”?
What does “cover” mean in a patent assignment clause? Plaintiff Openwave Systems, Inc. developed software for network computing but decided to sell off the client-side part of the business, keeping the server-side. It sold the business to Purple Labs S.A., predecessor to defendant Myriad France S.A.S. Some patents were assigned in the transaction, but the… Continue reading
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Important New Patent Ownership Decision!
Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. In an important new decision, the Supreme Court held that Congress did not change one of the fundamental precepts of patent law – that the individual inventor is the original owner of invention – obliquely, through an ambiguous definition of “subject… Continue reading
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Invention Assignment and Shop Right
I don’t follow patent law as attentively as I do copyright and trademark, but I don’t recall seeing too many shop right cases. Maybe this is ordinary stuff, but it was new to me. First though is the dispute over who owned the invention, the employee or the employer. Normally it’s pretty well defined in… Continue reading
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The New Federal Law of Patent Assignment
In Abraxis Bioscience, Inc. v. Navinta, LLC last November, a panel of the Court of Appeals for the Federal Circuit examined a set of transactional documents and held that the plaintiff did not own the patents when the suit was filed and therefore did not have standing (blog post here). This wasn’t your run-of-the mill… Continue reading
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What Nunc Pro Tunc Means
Patent standing cases are a dime a dozen, so I don’t necessarily blog them. But Epic Sporting Goods, Inc. v. Fungoman LLC gives a really good summary of the legal significance of an assignment nunc pro tunc, so I thought I’d share it. On August 1, 2006 the asserted patent (U.S. Patent 7.082,938 titled “Baseball Fielding Practice… Continue reading
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Assignment of a Patent’s Priority Right
The IPKat explains it. Aye-yigh-yigh. You figure it out. The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License. Continue reading
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Standing for Patent Infringement Just Got a Lot Easier
Mindspeed was the owner of seven patents and plaintiff WiAV Solutions LLC was a licensee, claiming to be exclusive. Prior to WiAV becoming a licensee, various predecessors-in-interest had granted the following licenses to third parties: Entity Potential Licensees Patents Rockwell Science Center Rockwell International and Affiliates All Conexant Subsidiaries Spin-offs Joint Development Partners (limited to… Continue reading
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Assigned or Not?
The ‘086 patent was owned by Astra L and the ‘524 and ‘489 patents were owned AZAB. On, and effective on, June 28, 2006 and pursuant to an earlier-executed Asset Purchase Agreement, a third company, AstraZeneca-UK (“AZ-UK”), purported to assign the three patents to plaintiff Abraxis. Does Abraxis have standing? It’s not as clear-cut as… Continue reading
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