assignment : CAFC Alert

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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