• Posts Tagged ‘terminal disclaimer’

    STC.UNM v. Intel Stands

    by  • April 8, 2015 • patent • 0 Comments

    I’ve written in the past about a patent ownership stand-off, where, because of a mix-up in assignments and a disinterested possible co-owner, the interested owner cannot enforce the patent (original decision here and en banc decision here). The Supreme Court has refused to review the decision, so Ethicon, Inc. v. United States Surgical Corp.,...

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    Joinder of an Unwilling Co-owner

    by  • June 30, 2014 • patent • 0 Comments

    On the left we have a disinterested patent owner; there was a mixup about the status of an inventor, Bruce Draper, so he assigned his rights in what ultimately became the ‘321 patent to the University of New Mexico (UNM) rather than his employer, Sandia. UNM realized the mistake and assigned to Sandia “those...

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    “Co-owned” Means Owned by the Same Entity

    by  • October 7, 2012 • patent • 0 Comments

    Short and sweet: The parties agree with binding Federal Circuit precedent that holds that if the ownership of a disclaimed patent is separated from the prior patent, the disclaimed patent is not enforceable. Further, the parties do not dispute that, according to the condition set forth in the Terminal Disclaimer, the ‘176 Patent is...

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    Assignment of a Part of a Continuation-in-Part?

    by  • September 30, 2012 • patent • 0 Comments

    Plaintiff AB Coaster Holdings Inc. claimed to be the owner of patents that were subject to terminal disclaimers.  Some of the patents were expressly assigned and some were not.  Here are the pairings: ‘633 (assigned) and ‘079 (not expressly assigned)‘445 (not expressly assigned) and ‘263 (assigned)‘079 (not expressly assigned) and ‘263 (assigned) The defendant...

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