patent
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Consideration Can Be a Failed Expectancy
I’ve written about MemoryLink Corp. v. Motorola Solutions, Inc. in the past (recursive link). Peter Strandwitz and Bob Kniskern, owners of plaintiff Memorylink, had collaborated with defendant Motorola Solutions on the development of a handheld camera that could wirelessly transmit and receive video signals. Standwitz and Kniskern trusted Motorola Solutions with filing patent applications on… Continue reading
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Contracts 101
Patent law heavily involves interpretation of language. In addition to the construction of the claims themselves, it has an almost unintelligible set of rules for distinguishing licenses from assignments and special rules for the language one must use to assign a patent. But in Fort. v. Innegra Technologies, LLC, we have a more interesting situation,… Continue reading
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Not Clever Enough Yet
Oh those patent trolls, cleverer and cleverer. To try to keep their cases in Texas, NPEs have rented empty office space in Texas and Continue reading
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Having Documents Helps
I usually write about ownership issues in the context of infringement claims. But I ran across a tax case where management (or actually, lack of management) of the ownership of the intellectual property ended up creating a tax deficiency on 29.6 million dollars. In 1976 William and Patricia Cavallaro started a contract manufacturing company, Knight… Continue reading
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It’s All About the Words
Here’s a short one. We have co-inventors, the relevant one is James McGhie. He was an inventor on a patent of which the patent-in-suit was a continuation-in-part. McGhie assigned the original patent to the predecessor-in-interest of the plaintiff, but didn’t assign his ownership of the continuation-in-part. The plaintiff argued that the assignment of the parent… Continue reading
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How to Put a Dead Stop to a Patent Infringement Suit … For Now
I previously wrote about a Federal Circuit decision with a bit of an odd fact pattern. There was some kind of joint development between the University of New Mexico (UNM) and Sandia. A Sandia inventor assigned a resulting patent, the ‘998 patent, to UNM instead of his employer, Sandia. UNM then assigned the patent to… Continue reading
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A Partner is Not Hired to Invent
We have an interesting “employed to invent” story which arose in what I suspect can be the most common of situations—two people invent a product, form a company to commercialize it, file a patent application, and then have a falling out before the patent application is even completed. Who owns the patent? In Legacy Seating,… Continue reading
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Is It a Sublicense If It’s For All Licensed Rights Except One Day?
Those who draft patent licenses take note. MDS (Canada), Inc. v. Rad Source Technologies, Inc. is a state court opinion from the Supreme Court of Florida distinguishing an assignment of a patent license from a sublicense. MDS (Canada), now “Nordion,” was a licensee of technology from Rad Source. The license could not be assigned absent… Continue reading
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A Patent Assignment Isn’t Rescinded Just Because You Say So
In December, 2010, plaintiff Dominion Assets assigned its patents to non-party Acacia Patent Acquisition, LLC, a subsidiary of the notorious non-practicing entity Acacia Research Corp., for Acacia to monetize. Below is the operative assignment language: If you can’t read the image, it says: Effective immediately upon the date of Acceptable Completion as set forth in… Continue reading
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Joinder of an Unwilling Co-owner
On the left we have a disinterested patent owner; there was a mixup about the status of an inventor, Bruce Draper, so he assigned his rights in what ultimately became the ‘321 patent to the University of New Mexico (UNM) rather than his employer, Sandia. UNM realized the mistake and assigned to Sandia “those rights… Continue reading
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