assignment
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Unexciting Patent Ownership Decision
No one else seems to have reported much on this case, which is understandable – there’s not really any new ground covered. But it is a Federal Circuit decision, so I’ll give you a brief summary. Yale Preston was an employee of Marathon Oil Co. A few days after his employment began, at the same… Continue reading
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1.65% of 33% Ownership
Marques Class 46 Blog reports on a decision out of Poland that I struggle with conceptually. There were three joint owners of the trademark SILMENT. One of the joint owners assigned 1.65% of his 33% ownership to his son. This is where I’m struggling. What does an approximate 1/2% ownership interest in a trademark actually… Continue reading
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Trademark Troll Extraordinaire
We occasionally hear about trademark trolling, but Premier Pool Management Corp. v. Lusk takes it to a whole new level. Plaintiff Premier Pool Management Corp. (“PPMC”) offers swimming pool and spa construction services through licensees doing business as Premier Pool & Spas. It first used the PREMIER POOL & SPAS mark in 1989 and was using it in interstate… Continue reading
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I Learned What “Dubitante” Means
For purposes of patent standing, there are generally three categories of ownership described: patent owner, exclusive licensee, and non-exclusive licensee. The first has the right to sue, an exclusive licensee must join the assignee in any patent infringement suit, and the non-exclusive licensee has no standing at all. But the first category can be subdivided.… Continue reading
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The Missing Inventor
I love cases where the defendant goes back and finds another potential inventor. Stemcells, Inc. v. Neuralstem, Inc. shows some of the ways this can play out – in this case, standing, and the rarely-invoked bona fide purchaser in good faith defense. The patents in dispute are 7,115,418entitled “Methods of proliferating undifferentiated neural cells” and… Continue reading
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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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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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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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