correcting inventorship
-
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
-
When an Assignor is Not Estopped
Assignor estoppel is an equitable doctrine that precludes the assignor of a patent from later challenging the validity of the patent. The reach of the doctrine is limited, though, as explained in Borgwarner, Inc. v. Honeywell International, Inc. The patents-in-suit are for a titanium compressor wheel made by investment casting. In mid-2000, Plaintiff BorgWarner engaged… Continue reading
-
Memorylink Gets to Fight Another Day
Last February, plaintiff Memorylink was on the losing side of a motion to dismiss almost all counts of a complaint against Motorola, a company with which it had a joint development agreement. During their relationship, Motorola filed a patent application that had both Motorola and Memorylink inventors listed, then filed a second application with just… Continue reading
-
Scope of the MOU
Memorylink Corp. v. Motorola, Inc. is a fairly routine story of a joint development agreement gone wrong, with the small, independent inventors at Memorylink complaining they were mistreated by the far larger Motorola. Most of the claims were rightly kicked on statute of limitations grounds, but there was one theory that I thought the court… Continue reading
-
Invention and Assignment of Patents
A couple of ownership cases of interest. First, Oren Tavory failed in his effort to join in the NTP jackpot also known as the RIM settlement – he’s not a co-inventor because he didn’t have evidence that his contribution to the invention was more than simply the exercise of ordinary skill in the art. Tavory… Continue reading
-
Lesson Learned
This is a story that makes lawyers groan “if only I could’ve been there.” The plaintiff, Miller, had an idea for a four-way induction unit for an air handling system. He told his idea to Shutes, who introduced him to defendant M&I Heat Transfer Products, a company that designed and manufactured induction units. M&I, working… Continue reading
About Me
Learn more about me at my website, Chestek Legal
Recent Posts
Categories
- copyright
- domain name
- moral rights
- patent
- right of publicity
- social media
- trade dress
- trade libel
- trade secret
- trademark
- Uncategorized