• Posts Tagged ‘standing’

    The Missing Inventor

    by  • April 15, 2012 • patent

    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”...

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    No Infringement for Claim Conditioned on Rescission

    by  • April 4, 2012 • patent

    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...

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    Sketchy Standing Decision

    by  • February 12, 2012 • patent

    The only good thing about the latest Federal Circuit standing decision is that it’s nonprecedential.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...

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    The Danger of Terms of Art

    by  • January 24, 2012 • patent

    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...

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    Beneficial Owners Don’t Have Standing

    by  • December 21, 2011 • patent

    The Eastern District of Virginia recently held that a beneficial owner of a patent has standing to bring an infringement claim. It appears the Federal Circuit disagrees.  The ‘451 patent was invented by Mayer Michael Lebowitz and James Seivert, both deceased. The Lebowitz Trust now owns Mr. Lebowitz’s ownership interest in the patent. The...

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    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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    The STOLICHNAYA Case Ends Again

    by  • September 19, 2011 • trademark

    In 2004 plaintiff Federal Treasury Enterprise Sojuzplodoimport (FTE) challenged defendant Spirit International B.V.’s (“SPI”) claim of ownership of the various STOLICHNAYA trademarks. In 2006 the district court dismissed almost all claims on a motion to dismiss, holding that the incontestable status of SPI’s registration meant that FTE couldn’t challenge ownership. In 2010 the Court...

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    Does a “Beneficial” Patent Owner Have Standing?

    by  • September 7, 2011 • patent

    Often there is the concept of “beneficial owner” in intellectual property-related transactional documents.  My limited experience is that the concept is useful for tax purposes, i.e., one can have legal title in one company and “beneficial” ownership in another in order to create a favorable tax position. This presents some interpretive problems in the...

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    The New Federal Law of Patent Assignment

    by  • March 26, 2011 • patent

    In Abraxis Bioscience, Inc. v. Navinta, LLC last November, a panel of the Court of Appeals for the Federal Circuit examined a set of transactional documents and held that the plaintiff did not own the patents when the suit was filed and therefore did not have standing (blog post here).  This wasn’t your run-of-the...

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    Standing for Patent Infringement Just Got a Lot Easier

    by  • January 1, 2011 • patent

    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...

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