• patent

    Make a List, Check it Twice

    by  • February 5, 2009 • patent

    Of the four types of intangible property typically characterized as “intellectual property,” that is, patent, trademark, copyright and trade secret, only one, the patent, is a true grant of rights from the government. If the government says you don’t have it, you don’t have it. Which brings me to a sorry tale of oversights...

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    Quickly Decomposing

    by  • February 3, 2009 • patent

    Agreements that assign employees’ inventions to the employer are commonplace. O’Keefe v. County of St. Clair demonstrates why. Plaintiff John O’Keefe was an at-will Landfill/Resource Recovery Manager for the county landfill. Co-defendant CTI and Associates was a contractor at the landfill, working with O’Keefe on operations and landfill design. O’Keefe and the president of...

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    Mars Gets at Least One Do-Over

    by  • January 3, 2009 • patent

    The June, 2008 decision in Mars, Inc. v. Coin Acceptors, Inc., blogged here, was a tale of what happens when companies move IP assets around for tax purposes. In Coin Acceptors, Mars sued Coin Acceptors, then assigned the patents to a subsidiary, MEI, Inc. The assignment created a standing problem for Mars, which lost...

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    by  • December 10, 2008 • patent

    Han Nee invented, and patented, the use of various silver alloys to be used in reflective and semi-reflective layers of CDs and DVDs. He may have done it while employed for Sony DADC US Inc. (“DADC”) and Sony, Inc. (“Sony”), a company related to DADC somehow. Nee had worked for both companies at different...

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    Paying Royalties in the Hereafter

    by  • December 4, 2008 • patent

    Contract cases (like patent cases) often come down to one word. In Imation Corp. v. Koninklijke Philips Electronics N.V., it was the little word “hereafter.” In 1995 Imation’s predecessor 3M and Philips entered into a patent cross-license for CD and DVD technology. The license terminated on March 1, 2000, except that the patent licenses...

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    I Swear I Invented It First

    by  • November 30, 2008 • patent

    Judge Alsup from the patent-heavy Northern District of California court has taken advantage of the almost certain appeal of patent cases by writing an “Appendix” to point out what he perceives as an unfairness in patent jurisprudence. He asks the Federal Circuit to address the burden of proof in swearing behind references. The patent...

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    Trifecta of IP Protection

    by  • November 25, 2008 • copyright, patent, trademark

    The legal blog with what has to be the longest name ever, the Los Angeles Intellectual Property Trademark Attorney Blog, brings our attention to an almost perfect trifecta of intellectual property ownership, where jeans are protected by patent, trademark and copyright. Almost perfect, because while the same stitching design on the back pockets is...

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    Invention and Assignment of Patents

    by  • October 28, 2008 • patent

    A couple of ownership cases of interest. First, Oren Tavory failed in his effort to join in the NTP jackpot also known as the RIM settlement – he’s not a co-inventor because he didn’t have evidence that his contribution to the invention was more than simply the exercise of ordinary skill in the art....

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    Patent Ownership and Joint Development Agreements

    by  • October 8, 2008 • patent

    It was big news when Lucent Technologies won a $1.5 billion patent infringement suit against Gateway, Dell and Microsoft.  Less memorable was when the jury award was tossed on a motion for judgment as a matter of law (Lucent Technologies Inc. v. Gateway, Inc., 509 F.Supp.2d 912 (S.D.Cal. 2007)).  Now, the Court of Appeals for the Federal Circuit has affirmed the...

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    Patents in the Ether, Admission to the Rescue

    by  • October 4, 2008 • patent

    THERASENSE, INC., Plaintiff, v. BECTON, DICKINSON AND COMPANY, Defendant.No. C 04-02123 WHAConsolidated with No. C 04-03327 WHA, No. C 04-03732 WHA,No. C 05-03117 WHAUNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA2008 U.S. Dist. LEXIS 76716 July 14, 2008, DecidedJuly 14, 2008, Filed  OPINION ORDER DENYING DEFENDANT’S MOTION TO DISMISS Abbott Laboratories filed this...

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