standing
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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
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The STOLICHNAYA Case Ends Again
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 of… Continue reading
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Does a “Beneficial” Patent Owner Have Standing?
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 United… Continue reading
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The New Federal Law of Patent Assignment
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 mill… 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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Copyright Owner, Employee, or Both?
Ashley Gasper has several hats. He is an adult film star using the stage name Jules Jordan. (Not what you think, it’s a USPTO link. Click away.) He is the president and sole shareholder of Jules Jordan Video, Inc. (innocent too – Wikipedia), the creator of the videos in which Gasper stars. He produces,… 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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Very Helpful Federal Circuit Explication of Standing Analysis
Lawsuits about standing in patent cases are a dime a dozen: you can find some here. But this case has some really nice summary if you need to get a quick take on the legal standard. First, here are the possible standing iterations: Under Aspex Eyewear, a patent may not have multiple separate owners for… 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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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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