Coinco strategy
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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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Tax Structuring Strikes Again
Oh, adidas. adidas AG is a large multinational conglomerate headquartered in Germany. It reported that at the close of 2014 it had 154 subsidiaries, one of which is co-plaintiff adidas America, Inc. A few years ago adidas developed “miCoach,” an “interactive personal coaching and training system.” Parent adidas AG owns the company’s US patents but,… Continue reading
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Standing for Patent Infringement Just Got a Lot Easier
Mindspeed was the owner of seven patents and plaintiff WiAV Solutions LLC was a licensee, claiming to be exclusive. Prior to WiAV becoming a licensee, various predecessors-in-interest had granted the following licenses to third parties: Entity Potential Licensees Patents Rockwell Science Center Rockwell International and Affiliates All Conexant Subsidiaries Spin-offs Joint Development Partners (limited to… Continue reading
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Assigned or Not?
The ‘086 patent was owned by Astra L and the ‘524 and ‘489 patents were owned AZAB. On, and effective on, June 28, 2006 and pursuant to an earlier-executed Asset Purchase Agreement, a third company, AstraZeneca-UK (“AZ-UK”), purported to assign the three patents to plaintiff Abraxis. Does Abraxis have standing? It’s not as clear-cut as… Continue reading
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Claims Left Barely Standing
Commerce Bancorp LLC v. Hill is a meaty enough case on ownership issues alone it’s good for two blog posts. First is a standing problem that cropped up, second an allegation of trademark abandonment. I’ll do standing now and abandonment later. I am always somewhat baffled by changes in ownership of intellectual property when the… Continue reading
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Intracompany Patent Transfer Strikes Again: Two Years of Damages Foregone
The Coinco strategy is an attack on standing because the company has shuffled patent ownership around between corporate family members. If the plaintiff is not the family member that owns the patent, then it can’t bring the suit. In Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., the patent-in-suit was owned by a wholly-owned… Continue reading
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The Coinco Strategy
Mars, Inc. v. Coin Acceptors, Inc., first blogged here, demonstrated what can go wrong with ownership of patents within a corporate enterprise. As a refresher, in Mars the defendant, “Coinco,” successfully attacked the chain of title of the patents in suit. Mars had transferred ownership of the patents between family members during the lawsuit, a… Continue reading
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It’s Alive! Or On Life Support, at Least
Candy company Mars has a convoluted ownership saga for some patents related to currency acceptors in vending machines. In a classic case of the left hand not being introduced to the right, Mars, Inc. had assigned patents to another member of the corporate family, Mars Electronic International, Inc. (MEI),* during ongoing patent litigation. This created… Continue reading
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Mars Gets at Least One Do-Over
The June, 2008 decision in Mars, Inc. v. Coin Acceptors, Inc., blogged here, was a tale of what happens when companies move IP assets around for tax purposes. In Coin Acceptors, Mars sued Coin Acceptors, then assigned the patents to a subsidiary, MEI, Inc. The assignment created a standing problem for Mars, which lost its… Continue reading
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Shifting IP
Update: See more recent post on related case here. In large corporate entities, intellectual property is often placed and moved around to improve the company’s tax position. The IP department may not be consulted on the shift, finding out only at the last minute when it is asked to execute the assignments that the ownership… Continue reading
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