Williams Mullen's Trending Now - An IP Podcast - Intellectual Contracts
Protecting IP Through Employment Law
Precedential and Key Federal Circuit Opinions - 1. BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more
Precedential and Key Federal Circuit Opinions - LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [OPINION] (2021-2348, 5/21/24) Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark - Stoll,...more
In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more
The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more
Precedential Federal Circuit Opinions - QUALCOMM INCORPORATED v. INTEL CORPORATION [OPINION] (2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593, 2020-1594, 7/27/21) (Moore, Reyna, Stoll) - Moore, J. Vacating final...more
IN RE: SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., LG ELECTRONICS USA, INC. [OPINION] (2021-139, 2021-140, 6/30/2021) (Lourie, Dyk, Reyna) - Dyk, J. Granting the writs of...more
296-1. Federal Circuit Finds Pre-Invention Ideas Not Covered Under Employment IP Assignment Agreement - The United States Court of Appeals for the Federal Circuit recently affirmed a ruling by the United States...more
Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal No. 2020-1785 (Fed. Cir. Apr. 29, 2021) - The Federal Circuit’s only precedential patent decision this week comes on appeal from the International Trade...more
On this week’s episode, George Summerfield and Kelly Plummer explore five key questions academic medical centers often face with respect to patent ownership and enforcement. Their discussion covers a number of issues,...more
On July 20, 2018, the Federal Circuit affirmed in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. that tribal immunity cannot be asserted in IPRs. The appeal stemmed from a dispute between Allergan and various generic...more
In a highly anticipated decision on the Saint Regis Mohawk Tribe’s motion to terminate inter partes review proceedings, the Patent Trial and Appeal Board rejected tribal sovereign immunity to IPRs. The PTAB’s decision also...more
What is the difference between an employment agreement that says “I hereby assign inventions I create during my employment to my employer,” and one that says “I will assign inventions I create during my employment to my...more
Patent owners and employers: Pay attention to the words in assignment and employment agreements that transfer patent ownership to you. A recent Federal Circuit case once again emphasizes the need to use particular language to...more
Today, Judge Bryson, a Federal Circuit judge sitting by designation in the U.S. District Court for the Eastern District of Texas, Marshall Division, issued an Opinion and Order granting Allergan’s motion to join the St. Regis...more
In In Re Cray, the panel grants Cray’s petition for a writ of mandamus, ruling that the district court’s handling of the case is not consistent with its case law regarding what is “a regular and established place of...more
Old Republic’s IPR petition was effectively unopposed due to a defect in the chain of assignment, which led the PTAB to hold all claims unpatentable without considering arguments or evidence submitted in favor of...more
Ruckus Wireless, Inc. v. Innovative Wireless Solutions (No. 2015-1425, 1438, 5/31/16) (Prost, Reyna, Stark) - May 31, 2016 3:11 PM - Reyna, J. Affirming summary judgment of non-infringement of patents based on...more
Addressing the issue of when patent rights are assigned under a contract, the US Court of Appeals for the Federal Circuit overturned the district court’s finding that a prospective inventor had surrendered his rights to an...more