Plaintiffs Beware: Is the Defendant a Co-Owner of the Asserted Patent?

Morrison & Foerster LLP

Morrison & Foerster LLP

In a recent summary judgment order involving patent ownership, District Judge William H. Orrick found that the defendant could not infringe the patent at issue because the defendant co-owns the patent. The plaintiffs, the Regents of the University of California and an affiliated company, sued the defendant LTI Flexible Products, Inc. dba Boyd for patent infringement. The court held that Boyd co-owns the patent because a named inventor, Carl Meinhart, who worked as a professor for the University of California, Santa Barbara, assigned his rights to the patent to a company that Boyd later acquired.

In reaching its decision, the court considered three agreements. The first is a 1996 agreement in which Meinhart promised to assign his rights in inventions developed at the University to the University. The second is a 2013 amendment to the 1996 agreement that actually made the assignment to the University. The last is a 2012 agreement between Meinhart and PiMEMS, a company that Meinhart co-founded while he was working at the University. The 2012 agreement states that Meinhart assigns to PiMEMS all rights to intellectual property developed while he is providing services to PiMEMS.

The court found that Meinhart still possessed all of his rights after the 1996 agreement since the agreement was not an automatic assignment of the rights but a mere promise to assign them. The 2012 agreement assigned Meinhart’s rights to PiMEMS because Meinhart developed the technology while he was providing services to PiMEMS. The court also found the 2012 agreement valid and supported by consideration as Meinhart benefited from his company owning the intellectual property that he developed. Finally, the court found that because Meinhart already assigned the rights to his own company, PiMEMS, in 2012, he had no rights to assign to the University when he executed the 2013 amendment.

The court concluded that Boyd acquired the rights to the patent after Boyd acquired PiMEMS and all of its property in 2019. Because Boyd cannot infringe a patent it co-owns or, at the very least, the plaintiffs did not include all co-owners, the court granted summary judgment for Boyd.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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