Assignments : CAFC Alert

BEWARE OF A SURPRISE CO-OWNER OF A PATENT WHO DOES NOT WANT TO ENFORCE ITS PATENT

Sung-Hoon Kim | June 12, 2014

STC.UNM v. Intel Corp.

June 6, 2014

Panel: Rader, Dyk, and Newman. Opinion by Rader. Dissent by Newman

Summary:

The ‘998 patent was a CIP of the ‘312 patent, which was jointly owned by STC.UNM and Sandia.  Because a terminal disclaimer (which required a common ownership of both patents) was filed during prosecution of the ‘998 patent, STC.UNM and Sandia are co-owners of the ‘998 patent even if Sandia did not make any contribution to the ‘998 patent.  STC.UNM filed an infringement suit concerning the ‘998 patent against Intel, and Sandia refused to join the lawsuit.  The district court dismissed the case for a lack of standing, and the CAFC affirmed by holding that all co-owners must ordinarily consent to join as plaintiffs in an infringement suit.  Furthermore, both the district court and the CAFC refused to involuntarily join Sandia to the case as a necessary party (FRCP Rule 19).

본사건은연방지방법원뉴멕시코지원의판결에불복하여 STC/UNM이연방순회항소법원 (CAFC)에항소한사건이다.  CAFC는연방지방법원과같이‘312 특허를바탕으로일부계속출원된특허 (continuation-in-part)인‘998 특허심사도중원고STC/UNM가존속기간포기서 (terminal disclaimer)를제출함으로써특허심사거절을극복하였으므로, STC/UNM과 Sandia는‘998 특허의공동소유자(co-owners)라고판단하였다 (Sandia는‘998 특허발명에공헌을하지않았다).  또한CAFC는 Sandia의소송참여의사에상관없이 STC/UNM이인텔을상대로‘998 특허침해소송을제기한것에대해STC/UNM은원고적격(standing)이없다고판단하여소송을기각하였다.  왜냐하면특허침해소송에서는특허의모든공동소유자가원고로참여해야하지만Sandia는소송참여를하지않기로결정하였기때문이다.  마지막으로CAFC는연방지방법원과마찬가지로본사건은연방민사소송규칙 19조의involuntary joinder rule이적용되지않아Sandia를원고로강제참여시킬수없다고판단하였다.


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License agreement to a patent may extend to a corresponding reissue patent

Andrew Melick | December 19, 2012

Intel Corp. v. Negotiated Data Solutions, Inc.

December 17, 2012

Panel:  Prost, Wallach and Linn.  Opinion by Linn.

Summary

Intel and National Semiconductor Corp. (“National”) entered into a cross-licensing agreement.  The agreement gave Intel rights to National’s patents and patent applications having an effective filing date during the period in the agreement which lasted from 1976 to 2003.   This case deals with four patents that were covered under the agreement. National assigned these patents to Vertical Networks, Inc. (“Vertical”) in 1998.  Vertical then filed broadening reissue applications for three of the patents.  In 2003, Vertical assigned the original patents and the reissue applications to Negotiated Data Solutions, Inc. (“N-Data”).  In 2005 and 2006, well after the agreement expired, the PTO issued reissue patents to N-Data.  The issue in this case is whether the agreement, which licenses National patents to Intel, automatically extends to any reissue patents that are derived from those licensed National patents.  The CAFC held that the license agreement extends to the full scope of any coverage available by way of reissue for the invention disclosed.


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A Federal Circuit Lesson on the Structuring of Employment Agreements to Ensure That a Company Owns Its Employees’ Inventions

Stephen Parker | July 25, 2012

Preston v. Marathon Oil Company and Thomas Smith

July 10, 2012

Panel:  Bryson, Dyk and O’Malley.  Opinion by O’Malley.

Summary

In this case, an employee, Yale Preston (“Preston”), executed an employment agreement about one month after starting to work as an employee for Marathon Oil Company (“Marathon”).   Whether or not the execution of an agreement after starting employment requires further consideration beyond “continued employment” varies based on state law.   Here, the Federal Circuit held that no further consideration was required under Wyoming state law and that the employer, Marathon, owned the invention at issue by virtue of the employment agreement.   The Federal Circuit further held that Preston did not breach the employment agreement by failing to later sign a subsequent assignment because the employment agreement included the language “does hereby assign” in relation to future inventions, whereby the invention at issue was assigned to Marathon by the employment agreement regardless of whether the invention was after the execution of the employment agreement.


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