Category Archives: Assignment / Ownership

UT cannot be involuntarily joined due to state sovereignty, but DC incorrectly analyzed whether case could proceed without UT

Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine Docket No. 2019-1424 NEWMAN (D/C), O’MALLEY, TARANTO (C) July 24, 2020 Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in … Continue reading

Posted in Assignment / Ownership, Licensing, State Sovereignty | Leave a comment

DC decision of no invalidity including no common ownership regarding double-patenting affirmed

Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al. Docket No. 2020-1037 O’MALLEY, REYNA (D), CHEN July 1, 2020 Brief Summary: DC finding of no invalidity for obviousness-type double-patenting (no common ownership), written description or obviousness … Continue reading

Posted in Assignment / Ownership, Double Patenting, Obviousness | Leave a comment

Corrected assignment effective to show ownership, willful infringement finding and prejudgment interest award affirmed

Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc. Docket No. 2018-2416, 2019-1012 O’MALLEY, REYNA, WALLACH May 13, 2020 Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective … Continue reading

Posted in Assignment / Ownership, Damages, Willfullness | Leave a comment

DC decision vacated and remanded since it should have considered whether assignee AMD should be joined as a necessary party

Lone Star Silicon Innovations, LLC v. Nanya Tech. Corp. et al. Docket 2018-1581, -1582 O’MALLEY, REYNA, CHEN May 30, 2019 Brief summary: DC decision vacated and remanded since it should have considered whether assignee AMD should be joined as a … Continue reading

Posted in Article III disputes, Assignment / Ownership | Leave a comment

Arista Networks, Inc. v. Cisco Systems, Inc.

Docket Nos. 2017-1525, -1577 (IPR2015-00978) PROST, SCHALL, CHEN Nov. 9, 2018 Brief summary: Board IPR decision remanded for reconsideration under FC panel’s revised claim construction. Board decision that assignor estoppel does not apply to IPRs affirmed. Summary: Arista and Cisco … Continue reading

Posted in Assignment / Ownership, Claim Construction, Inter Parties Review (IPR), IPR | Leave a comment

Mylan Pharmaceuticals Inc. et al. v. Saint Regis Mohawk Tribe

IPR Nos. 2016-01127 through -001132 U.S. Pat. Nos. 8,685,930B2; 8,629,111 B2; 8,642,556 B2; 8,633,162 B2; 8,648,048 B2; 9,248,191 B2 (“Allergan patents”) USPTO Decision Denying Tribe Motion to Terminate Brief summary: Board denied the Tribe’s motion to dismiss the IPR proceedings … Continue reading

Posted in Assignment / Ownership, Inter Parties Review (IPR), IPR, Licensing | Leave a comment

Advanced Video Technologies LLC v. HTC Corporation et al.

Docket Nos. 2016-2309-11 NEWMAN (D), O’MALLEY (C), REYNA January 11, 2018 Brief summary: DC dismissal for lack of standing because a co-owner’s ownership interests in the patent were not transferred to” AVT “under the terms of an employment agreement” and … Continue reading

Posted in Assignment / Ownership | Leave a comment

Galen J. Suppes v. Kattesh V. Katti, et al.

Docket No. 2017-1142 NEWMAN, WALLCH, CHEN October 3, 2017 Non-precedential Brief summary: DC dismissal of Mr. Suppes complaint against university employer for declining to file patent applications for certain of his ideas and not allowing him to do so without … Continue reading

Posted in Assignment / Ownership, Inventorship | Leave a comment

Mentor Graphics Corporation v. Eve-USA, Inc. et al. (Synopsys)

Docket Nos. 2015-1470, -1554, -1556 On Petition for Rehearing En Banc September 1, 2017 Brief summary: Petitions for panel rehearing and rehearing en banc of the March 16, 2017 FC panel decision affirming the damages award and the grant of … Continue reading

Posted in Assignment / Ownership, Damages | Leave a comment

Intellectual Ventures I LLC, et al. v. Erie Indemnity Company et al.

Docket No. 2016-1128, -1132 PROST, WALLACH, CHEN March 7, 2017 Brief Summary: DC finding the IV lacked standing affirmed because assigning rights “‘in and to’ a particular patent” does not “automatically include[s] its child applications” (must explicitly refer to continuations … Continue reading

Posted in Assignment / Ownership, Patentability | Leave a comment