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McDermott Will & Emery

Getting to the Core of It: Assignment Clause Is Ambiguous

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The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable...more

Dorsey & Whitney LLP

A Cautionary Tale of Contempt Proceedings for Potential Violation of a Standard Protective Order in Trade Secrets Litigation

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Though litigants routinely enter into stipulated protective orders in the course of discovery that may involve sensitive company information (or even trade secrets), a recent ruling is a cautionary tale on the potential...more

Haug Partners LLP

“Shall Be the Property” Is Insufficient to Automatically Assign Title to an Invention in a Contract

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On August 2, 2021, in Omni MedSci, Inc. v. Apple Inc., No. 20-1715, slip op. (Fed. Cir. Aug. 2, 2021), a Federal Circuit panel decision, with a dissent, upheld the district court’s denial of Apple Inc.’s (“Apple”) motion to...more

Burr & Forman

Supreme Court Upholds, But Limits, Assignor Estoppel Doctrine

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On June 29, 2021, the Supreme Court limited the doctrine of assignor estoppel that has long prevented inventors from challenging the validity of patents they have assigned to a third party. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - December 2018

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The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Carlton Fields

If Your Employment Agreements Use This One Word, Ownership of Your Patents May Be in Jeopardy

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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

Bradley Arant Boult Cummings LLP

Don’t Just Agree to Transfer Patent Rights—Do It!

Bradley Arant Boult Cummings LLP on

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

Manatt, Phelps & Phillips, LLP

Intellectual Property Law - June 2016

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Defend Trade Secrets Act of 2016: An Overview - Why it matters: The Defend Trade Secrets Act of 2016 (DTSA) was signed into law on May 11, 2016 and gives trade secret owners a federal cause of action for injunctive...more

McDermott Will & Emery

Google’s Strategic Purchase of Rights and Counterclaim Do Not Survive Delaware’s Statute of Limitations - Personalized User Model,...

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Addressing the requirements for tolling the statute of limitations (SOL), the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s grant of judgment as a matter of law (JMOL), finding that the district...more

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