patent
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When an Assignor is Not Estopped
Assignor estoppel is an equitable doctrine that precludes the assignor of a patent from later challenging the validity of the patent. The reach of the doctrine is limited, though, as explained in Borgwarner, Inc. v. Honeywell International, Inc. The patents-in-suit are for a titanium compressor wheel made by investment casting. In mid-2000, Plaintiff BorgWarner engaged… Continue reading
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The Supreme Court and Ownership of Patents
The Supreme Court recently granted certiorari to decide a question of patent ownership. The case is Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. and involves interpretation of the Bayh-Dole Act of 1990. The Bayh-Dole Act discusses, in the case of federally-funded research, the relative rights of patent ownership… Continue reading
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Check the Corporate Records – Every Time
Litigation is expensive and the last thing you need is unnecessary motion practice. On June 16, 1998 an inventor employed by patent owner Tri-Star executed an assignment to “Tri-Star Electronics International, Inc., its successors, legal representatives and assigns,” an Ohio corporation. On September 9, 1999, he executed another assignment to Tri-Star as an Ohio corporation. … Continue reading
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Divorce Entitled to Full Faith and Credit
Co-inventor Mundi Fumokong was married to Fonda Whitfield when he filed for two related patent applications. In California, all property acquired by a married person during marriage is presumed to be community property, including patent applications. Fumokong and Whitfield later filed for a “quickie” divorce (those are the court’s words), more formally called a summary… Continue reading
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Someone Screwed Up
The Patent Prospector summarizes a Federal Circuit review of a botched effort to claim priority to an earlier-filed application. The child was filed without the first page, so there was no express claim of priority to its parent. Result? Patent invalid because it was anticipated by the factual, but not legal, predecessor. Post here. This… Continue reading
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AU Optronics Indeed Has Standing
So who owns the patent? “On the record presented, the Court concludes that AUO has demonstrated by credible chain of title evidence that it is the assignee of” U.S. Patent No. 6,689,629. Apparently realizing its potential problem, IBM US had also filed assignments from the inventors to IBM US in May 2007 (the lawsuit was… Continue reading
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Who Owns the Patent?
Here’s the assignment history, you be the judge: 1960: IBM Japan enters into a patent assignment agreement with IBM World Trade. January 1, 1963: IBM acquires from IBM World Trade all patents IBM World Trade has or thereafter acquires. June 25, 1981: amendment to 1960 agreement in between IBM Japan and IBM World Trade, stating… Continue reading
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Very Helpful Federal Circuit Explication of Standing Analysis
Lawsuits about standing in patent cases are a dime a dozen: you can find some here. But this case has some really nice summary if you need to get a quick take on the legal standard. First, here are the possible standing iterations: Under Aspex Eyewear, a patent may not have multiple separate owners for… Continue reading
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Most Excellent Conference
Yesterday there was a conference devoted to my favorite topic, Ownership and Control of IP Rights. What a shame it was on a different continent so I couldn’t attend. Luckily, the IPKat summarizes it here, here and here. This work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License. Continue reading
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Case Not to Miss
It’s a small point, but an important one: The recording of a [patent] assignment with the PTO is not a determination as to the validity of the assignment. However, we think that it creates a presumption of validity as to the assignment and places the burden to rebut such a showing on one challenging the… Continue reading
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