• Posts Tagged ‘correcting inventorship’

    Standing for Correction of Inventorship

    by  • October 23, 2011 • patent

    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...

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    When an Assignor is Not Estopped

    by  • November 12, 2010 • patent

    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...

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    Memorylink Gets to Fight Another Day

    by  • October 30, 2009 • patent

    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...

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    Scope of the MOU

    by  • March 8, 2009 • patent

    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...

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    Invention and Assignment of Patents

    by  • October 28, 2008 • patent

    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....

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    Lesson Learned

    by  • July 31, 2008 • patent

    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,...

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