terminal disclaimer
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STC.UNM v. Intel Stands
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., 135… Continue reading
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How to Put a Dead Stop to a Patent Infringement Suit … For Now
I previously wrote about a Federal Circuit decision with a bit of an odd fact pattern. There was some kind of joint development between the University of New Mexico (UNM) and Sandia. A Sandia inventor assigned a resulting patent, the ‘998 patent, to UNM instead of his employer, Sandia. UNM then assigned the patent to… Continue reading
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Joinder of an Unwilling Co-owner
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 rights… Continue reading
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“Co-owned” Means Owned by the Same Entity
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 enforceable… Continue reading
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Assignment of a Part of a Continuation-in-Part?
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 argued… Continue reading
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