Posts Tagged: "assignment"

Last week, the U.S. Court of Appeals for the First Circuit affirmed a district court ruling denying a request for declaratory judgment by Covidien LP and Covidien Holding Inc. (collectively, “Covidien”) against appellee Brady Esch, a former employee who assigned a medical device patent to a company he founded. After a nine-day trial, the jury awarded Covidien nearly $800,000, finding Esch incurred in a breach of confidential information. Covidien subsequently moved for a declaratory judgment asking the court to require Esch to assign later inventions. The district court denied this request. The First Circuit was tasked with determining whether the district court abused its discretion. Finding it did not, they affirmed.

The Federal Circuit reversed a district court finding that an inventor of water park surfing attractions breached his employment agreement and that his co-inventor was improperly listed as an inventor. The CAFC based the decision on its best prediction of how the California Supreme Court would interpret state law as applied to the case, applying the “employment contracts in a manner highly protective of former employees”.

In its decision, the Federal Circuit upheld a lower court’s ruling that Advanced Video did not have standing to sue for patent infringement after it was determined that the co-owner of the patent did not assign ownership to the patent under the terms of an employment agreement… Although Hsiun never signed an assignment declaration, she also never objected to the USPTO procedures leading up to the grant of the ‘788 patent. Newman’s dissent focused mainly on the terms of Hsiun’s employment agreement, which demonstrated that Ms. Hsiun’s inventions were the property of the employer.

In 2011, Advanced Video filed suit against HTC for patent infringement in the Southern District of New York. The district court dismissed the suit for lack of standing, finding that Advanced Video did not have an ownership interest in the patent. The Federal Circuit affirmed. Judge Newman dissented, arguing that Advanced Video had full ownership of the ?788 Patent and standing to sue for infringement. She found that the Employment Agreement, including the “will assign,” trust and quitclaim provisions, demonstrated a mutual intent and understanding that any inventions created during Ms. Hsiun’s employment at Infochips would be owned by Infochips.

Inselberg and Interactive filed a motion to dismiss Bisignano and First Data’s declaratory judgment claims and state court counterclaims, and moved to remand the action to state court. The district court agreed, finding that it lacked jurisdiction over Inselberg and Interactive’s claims that the assignment agreement was invalid. Those claims were based on questions of state law and did not depend on any federal issues or interpretations of federal law. First Data’s invalidity and infringement counterclaims were deemed “incidental and contingent” to Inselberg and Interactive’s ownerships claims and could not be resolved unless or until a state court determined that Inselberg and Interactive owned the patents. First Data and Bisignano appealed the district court’s dismissal of its claims and its order to remand.

At the center of the legal spat is the proper assignation of a series of patents covering DNA sequencing technologies, which UC alleges were developed while the inventor was under an agreement obliging him to assign those patents to UC… Chen’s work in the UCSC biophysics lab led to the development of a series of inventions related to individually addressable nanopores, which can be used to characterize a nucleic acid sequence in a nucleic acid molecule. These inventions were described in patent applications filed by UC with the U.S. Patent and Trademark Office (USPTO) listing Chen as an inventor… Instead of following his contractual obligations to assign his invention to UC, Chen allegedly filed patent applications and received patent grants assigned to medical technology firm Genia Technologies, a company he founded in March 2009 after leaving UCSC.

To maximize the return on investment from a patent portfolio, patent owners must determine which is more lucrative: sales or licensing. In general, patent licensing promises the highest total return on monetizing an IP portfolio because the IP owner can license the same asset or (a single patent or portfolio) to a number of different licensees. On the other hand, it may take three to five years to realize significant revenue from licensing. Additionally, licensing comes with a host of potential risks including litigation, invalidity arguments, and more. More and more frequently patent sales/transfers are part of licensing settlements to ensure there is more of a ‘win/win’ result for negotiating parties.

Assignments are the mechanism to transfer title of a patent, just like deeds are used to transfer real estate… For due diligence, the owners of the patents should provide all of the assignments in a chain of title. The chain of title always starts with the inventor and will progress to the current owner. If there are any license agreements relating to the patents, each of the previous owners of the patents should provide copies of the agreements.