patent
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No Infringement for Claim Conditioned on Rescission
Lufkin Industries sued Ken Nolen, Sim Gibbs and other former employees in Texas state court for trade secret misappropriation. Nolen and Gibbs counterclaimed alleging they were fraudulently induced to assign some patents to Lufkin and sought a declaration that they are the rightful owners of the patents. The counterclaim was severed and removed to federal… Continue reading
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The Danger of Overreaching
drawing and specimen for plaintiff’s trade dress registration Plaintiff Lauren Brenner started Pure Power Boot Camp, a military-style exercise facility. She hired the defendants and they decided to start a competing business called Warrior Fitness Boot Camp. The defendants behaved despicably; while still her employees they had one’s client/girlfriend promote Warrior Fitness to Pure Power… Continue reading
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Treating Patents More Like Property
The Patently-O blog has a thoughtful post on patent ownership and licensing, advocating for a stricter recording requirement: Because of an inadequate system for recordation, prospective purchasers, licensees, lenders, and even defendants in a lawsuit may have to take it on faith that the seller, licensor, borrower, or plaintiff truly owns, and has not previously… Continue reading
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No Do-Overs
Scanner Technologies Corp., the defendant in the declaratory judgment action, was the owner of 13 patents in the same family. There were multiple suits between it and declaratory judgment plaintiff ICOS Vision Systems, Inc. over “ball grid inspection devices,” which inspect the electrical connections between a microchip and circuit board. In 2008, ICOS filed a… Continue reading
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Inventing a Chemical Compound
Plaintiff Olusegun Falana was hired to work on synthesizing chemical compounds for use in liquid crystal display screens. The compounds had to perform over a range of temperatures. Falana developed a protocol for synthesizing compounds and, using the protocol, synthesized “Compound 7.” Compound 7 had a much improved temperature range, but it still wasn’t adequate.… Continue reading
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Sketchy Standing Decision
The only good thing about the latest Federal Circuit standing decision is that it’s nonprecedential. This is the sequence of events, taken from both the majority’s and dissent’s statement of them: In 2002, The Dow Chemical Company (“Dow”) assigned patents to a holding company, Dow Global Technologies, Inc. (“DGTI”). The dissent described the assignment as… Continue reading
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Defining Terms (Especially the “Agreement”)
Sometimes you read a decision and don’t know what the arguments really are until you read the dissent. Abbott Point of Care, Inc. v. Epocal, Inc. is one of those cases. Out of the Federal Circuit, it’s a question about whether a former employee’s duty to assign inventions survived various changes in the relationship and… Continue reading
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The Danger of Terms of Art
Sherman & Associates, Inc. v. Oxford Instruments, PLC discusses the fairly commonplace question of whether plaintiff Sherman & Associates, who was only a patent licensee, has standing to sue. The answer hinged on interpretation of the contract between it and the patent owner, ASM America, Inc. Sherman & Associates was originally the owner of the… Continue reading
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Beneficial Owners Don’t Have Standing
The Eastern District of Virginia recently held that a beneficial owner of a patent has standing to bring an infringement claim. It appears the Federal Circuit disagrees. The ‘451 patent was invented by Mayer Michael Lebowitz and James Seivert, both deceased. The Lebowitz Trust now owns Mr. Lebowitz’s ownership interest in the patent. The Trust… Continue reading
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Standing for Correction of Inventorship
A brief primer on when an employer has standing to bring a claim under Section 256 of the Patent Act, asking that a non-party employee be added as an inventor: you’ll have to show that you will have rights to the patent you would not otherwise have, or, more specifically, that the employee had a… Continue reading
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