patent
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Intracompany Patent Transfer Strikes Again: Two Years of Damages Foregone
The Coinco strategy is an attack on standing because the company has shuffled patent ownership around between corporate family members. If the plaintiff is not the family member that owns the patent, then it can’t bring the suit. In Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., the patent-in-suit was owned by a wholly-owned… Continue reading
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Guide to Due Diligence
Neil Wilkof at the IP Finance blog has a great post on due diligence on IP ownership. The post walks through the various ways that IP rights can be acquired and transferred, as well as modalities of default rules in different countries. Definitely something to keep in the file drawer, if not stuck on the… Continue reading
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Off-Topic
It’s off-topic, but I encourage everyone to go take a look atopensource.com, a web site launched today by my employer, Red Hat. It’s a place to talk about open source and the power of working openly and collaboratively. Come join the conversation. Continue reading
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The Missing Schedule
The Patent Prospector summarizes a decision from the Federal Circuit where the ownership of patents hinged on whether they were “related to” pending litigation at the time of an earlier intra-company assignment agreement. If the patents were related, they weren’t assigned and U.S. Surgical Corporation, not plaintiff Tyco Healthcare, remained the owner of the patents.… Continue reading
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The Coinco Strategy
Mars, Inc. v. Coin Acceptors, Inc., first blogged here, demonstrated what can go wrong with ownership of patents within a corporate enterprise. As a refresher, in Mars the defendant, “Coinco,” successfully attacked the chain of title of the patents in suit. Mars had transferred ownership of the patents between family members during the lawsuit, a… Continue reading
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Memorylink Gets to Fight Another Day
Last February, plaintiff Memorylink was on the losing side of a motion to dismiss almost all counts of a complaint against Motorola, a company with which it had a joint development agreement. During their relationship, Motorola filed a patent application that had both Motorola and Memorylink inventors listed, then filed a second application with just… Continue reading
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It’s Alive! Or On Life Support, at Least
Candy company Mars has a convoluted ownership saga for some patents related to currency acceptors in vending machines. In a classic case of the left hand not being introduced to the right, Mars, Inc. had assigned patents to another member of the corporate family, Mars Electronic International, Inc. (MEI),* during ongoing patent litigation. This created… Continue reading
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Standing or Not? Answer
Here is the answer to yesterday’s post: The court held that Balsam was the owner of the patent and therefore had standing to bring suit. Although San Marco was the owner of the patent in 2005, the court found that the 2006 agreement evidenced intent that Balsam immediately possess title to the patent and hold… Continue reading
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Standing or Not? Answer Tomorrow
Here are the facts, you decide who owns the patent. Court’s decision this time tomorrow. The original owner of the patent was Balsam Coffee Solutions, Inc. On June 9, 2005, Balsam assigned the patent to San Marco Roasters, Inc. The two inventors on the patent were co-owners of both companies. More than a year later,… Continue reading
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Recording It Doesn’t Make It So
I’ve read so many standing cases that it takes something different for me to pay much attention. This is one. Donald W. Huntley, Esq. is a patent lawyer and plaintiff Huntley, L.L.C., also known as Huntley & Associates, his firm. (His web site is www.monopolize.com, unfortunately not live right now.) EPL Technologies, Inc. retained Mr.… Continue reading
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