I asked whether a software development agreement assigned the patent rights in the software. The district court held “yes” but the Federal Circuit disagreed. Here again is the evidence in a letter agreement between plaintiff James (through his company GSP Solutions) and defendant J2 Cloud, known as JFAX at the time: This letter shall...
Read more →Defendant J2 Cloud Services (JFAX) hired plaintiff Greg James to write some software. Unbeknownst to James, JFAX filed a patent on the software. Many years later, James sued JFAX for correction of inventorship. JFAX argued that James didn’t have standing for correction of inventorship because he had assigned his patent rights to JFAX. The...
Read more →I’m writing about an inventorship case mostly because I have to bone up before I speak at the AIPLA Mid-Winter Institute in a talk rivetingly titled “The Backlash from Mismanagement of Inventorship in Multi-Party Deals.” If you’re attending, consider Speedfit LLC v. Woodway USA, Inc. your homework assignment. The plaintiffs are an inventor, Aurel...
Read more →Here’s an interesting little patent case involving the ownership of patents under foreign law, in this case German law. The plaintiff’s principal, Werner Schnaebele, worked in Germany for a predecessor of the defendant. He signed one employment agreement that didn’t have any provision for ownership of inventions conceived of by employees, meaning local law...
Read more →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...
Read more →It’s black-letter law, as black as it gets, that in the United States a patent is initially owned by the individual inventor. As stated by the Supreme Court: “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” Board of Trustees of the Leland Stanford...
Read more →To have constitutional standing for a claim, the remedy must provide some redress for the claimant. In the case of correcting inventorship on a patent, it generally means the correction will provide a financial advantage, although in theory it could be a reputational advantage. But Shukh v. Seagate Technology, LLC shows that’s pretty hard...
Read more →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...
Read more →Tahir Mahmood believed that he was a co-inventor of a RIM patent. He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology. In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694....
Read more →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...
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