Patent ownership may change by operation of law, including operation of foreign law In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the […] Continue Reading →
Ninth Circuit: “Exclusive” license from only one copyright co-owner really a nonexclusive license In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims. The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works. However, because the plaintiff only obtained the […] Continue Reading →
Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that […] Continue Reading →
“Exclusive enterprise licensee” does not have standing to sue for infringement without patent owner In a decision today, the Federal Circuit reversed a decision by a district court declining to dismiss a patent infringement case brought by a party possessing an "exclusive enterprise license" in the patent-in-suit. The trial court certified the question of licensee standing to the court for interlocutory appeal. In reversing the district court's denial of […] Continue Reading →
Patentee need not join in appeal for exclusive licensee to retain standing In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district […] Continue Reading →
Agreement to assign to employer requires separate assignment; dismissal for lack of standing vacated In a decision released late Friday, the Federal Circuit vacated and remanded a district court's decision that a plaintiff did not have standing to sue for patent infringement. At issue was whether a joint inventor of the patent had assigned his interest in the patent to a third party, thereby making the third party a […] Continue Reading →
If you just have the right to sue under a patent, don’t expect to actually be able to sue anyone Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all […] Continue Reading →
Infringement and royalty rate affirmed; dismissal of willful infringement claim reversed In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement. The court reversed-in part the district court's damages award. The […] Continue Reading →
Federal Circuit affirms dismissal of opposition proceeding for lack of standing In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark. There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for […] Continue Reading →
Federal Circuit again deals with standing In yet another case, the Federal Circuit has dealt with whether a party asserting a patent infringement claim had title to the patent, and thus standing to bring the claim against the defendant. Here, once the standing issue was raised at the district court, the Plaintiff opted to fix the chain of title, voluntarily dismiss […] Continue Reading →