patent
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Why There Are Nonprecedential Decisions
When we last visited Taylor v. Taylor Made Plastics, Inc., the trial court held that the spouse of the inventor acquired a legal ownership interest in the inventor’s patent in the divorce. I was a bit surprised; the language in the divorce was this: The Court finds that the proceeds from the production of the… Continue reading
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A Post-Lexmark Clarification for Patents
Here’s a little soupçon of a decision, a teaching moment from the Federal Circuit. It’s an easy fact pattern: a patent is in an inter partes reexamination, after the case has been fully briefed the patent owner assigns the patent, the Patent Trial and Appeal Board rejects the claims, and the former owner appeals the… Continue reading
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Never Use the Words “Intellectual Property” When It Matters
“Intellectual property” is a meaningless phrase when it comes to a description of legal rights. It it is catch-all term for at least three different types of intangible property: patent, trademark and copyright, and maybe boat hull designs, and maybe Indian tribal names, and maybe trade secrets, and maybe the right of publicity—you get the… Continue reading
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You Are Not the Only One Confused by the Law of Patent Standing
Here are the musings of a bewildered district court judge trying to figure out the difference between a patent owner, an exclusive licensee, and a “de facto” patent owner. The patent owner, a professor named Morris, had exclusively licensed just about everything to plaintiff BRK and the court had to figure out if BRK had… Continue reading
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Words Matter
“You keep using that word. I do not think it means what you think it means.” William Goldman, The Princess Bride (1973). I’m starting a new category of posts, about agreements where their wording, upon examination by a court, didn’t manage to do what the parties probably had set out to do. First up we… Continue reading
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Pay Attention to This One
Ok, here’s one every in-house patent attorney should pay attention to. It’s a case from North Carolina state court, but has much wider-reaching ramifications. Maybe it’s a fact pattern that doesn’t arise too often, but the result is pretty eye-opening. Plaintiff Robert Morris was the first employee at the defendant company Scenera Research, LLC. There… Continue reading
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Too Many Transactions
Six inventors, four changes in ownership before the patent issued and four more after. That’s a recipe for a standing problem. In Mayfair Wireless LLC v. Cellco Partnership d/b/a Verizon Wireless, Mayfair Wireless did a lot of due diligence and even some extra clean-up — it had the six original inventors assign any rights to… Continue reading
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Attorney-Client Privilege and Patent Assignment
Here’s an interesting tidbit to keep in mind—the assignee of a patent may be able to claim that a legal opinion given to the original owner of a patent is privileged despite the assignment of the patent. The case is SimpleAir, Inc. v. Microsoft Corp., and the challenger to the claim of privilege is Google.… Continue reading
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Do Your Homework
Since the Acacia Research Group‘s business model is based on acquiring patents, you would expect them to be fairly diligent about ensuring that the chain of title is solid. But it wasn’t in Endotach LLC v. Cook Medical Inc. Endotach claimed to be an exclusive licensee of two patents, having acquired its rights from Acacia.… Continue reading
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