patent
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The Successful Gambit
There’s nothing like a good procedural end run. Some people think it’s not sporting, but they are often very efficient. In re Hansen is a bankruptcy case with a history. Karl Hansen owned some US and foreign patents that he licensed to PixArt Imaging Inc. in 2008. Karl and Lisa Hansen filed for Chapter 7… Continue reading
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What It Takes to Get Attorneys’ Fees
This is a bit of a “duh” case from the Federal Circuit, a nonprecedential decision. The only surprising part of it is that the trial court, Judge Sparks in the Western District of Texas, didn’t impose even greater sanctions. It was quite a show of generosity. The patent-in-suit has a short chain of title; from… Continue reading
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There Is Just No Way Around the Absent Patent Owner
I’m writing about an inventorship case mostly because I have to bone up before I speak at the AIPLA Mid-Winter Institute in a talk rivetingly titled “The Backlash from Mismanagement of Inventorship in Multi-Party Deals.” If you’re attending, consider Speedfit LLC v. Woodway USA, Inc. your homework assignment. The plaintiffs are an inventor, Aurel Astilean,… Continue reading
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More on What Nunc Pro Tunc Means
One of my most read posts is “What Nunc Pro Tunc Means.” It means “now for then” in Latin, which is hardly much help. Extensive Google research tells me that it’s used to correct judicial orders, but that’s not what brings readers to my blog. In the IP field we typically use “nunc pro tunc”… Continue reading
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Read It Twice
Boy, is it hard to write an effective invention assignment for an employment agreement. First, under US law only a natural person can be an inventor, not a juristic person. When you have an employee whose job is inventing, the solution is to create an automatic assignment to the employer, which is generally done when… Continue reading
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When Your Tax Strategy Is Inimical to Your Patent Strategy
Don’t let the tax department screw up your patent infringement case. Or, when they do, I hope they saved more on taxes than you lost on the patent case.1 W.L. Gore & Assocs., Inc. v. C.R. Bard, Inc. is an example of what can happen. In 1983, Gore set up a patent holding company, Gore… Continue reading
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Dodged a Bullet
Awhile back I titled a blog “Pay Attention to This One.” People did. You can read in more detail about the facts in the appeals court opinion blogged here, but the crux is that an inventor had an oral agreement with his employer that he would be paid a bonus for his inventions in exchange… Continue reading
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Why You Have That Employment Agreement Gobbledygook
Plaintiff Advanced Video Technologies has been around the block a few times already. AVT claimed to be the successor to a patent for a video codec. It had successfully asserted the patent against other defendants but ran into some problems when trying to sue HTC Corp., Blackberry and Motorola Mobility. Its first attempt failed because… Continue reading
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Suing the Patent Owner
As we all know, standing is difficult in patent cases. There are two types of “exclusive” licensees (in my view, making jurisprudence very confusing). First is the “virtual assignee” who has essentially all of the rights of the patent owner and can sue for infringement without having to join the patent owner. Second is an… Continue reading
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Oh, Never Mind
When I started writing this post I was going to write about a case that had sussed out that there are different legal thresholds for determining ownership for purposes of prosecuting a patent versus what may be challenged by the PTO in an appeal of a rejection. But it turns out the conclusion was constructed… Continue reading
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