{"id":1915,"date":"2018-01-11T12:57:50","date_gmt":"2018-01-11T17:57:50","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1915"},"modified":"2018-01-12T09:23:48","modified_gmt":"2018-01-12T14:23:48","slug":"will-assign-%e2%89%a0-do-assign-check-your-chain-of-title","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1915","title":{"rendered":"“Will Assign” \u2260 “Do Assign”; Check Your Chain of Title"},"content":{"rendered":"

In Advanced Video Technologies LLC v. HTC Corporation<\/a>, [2016-2309, 2016-2310, 2016-2311] (January 11, 2018) the Federal Circuit affirmed the dismissal of an action for infringement of\u00a0U.S. Patent No. 5,781,788 on the ground that a\u00a0co-owner of the patent was not a party\u00a0to the suit.<\/p>\n

The Federal Circuit explained that\u00a0the single\u00a0issue involved in the appeal was whether a co-inventor of\u00a0the patent transferred her co-ownership interests in the\u00a0patent under the terms of an employment agreement.<\/p>\n

Plaintiff, Advanced Video,\u00a0Advanced Video asserted that it obtained co-inventor\u00a0Hsiun\u2019s co-ownership interests in the invention through a
\nseries of transfers:<\/p>\n

    \n
  1. The first\u00a0transfer was made before the \u2019788 patent application was
    \nfiled, pursuant to a January 1992 Employment Agreement
    \n(\u201cEmployment Agreement\u201d) between Ms. Hsiun and
    \nInfochips.<\/li>\n
  2. The second transfer occurred when Infochips\u2019\u00a0\u201creceivables,\u201d which had been pledged as security in a\u00a0financing agreement between Infochips and an entity\u00a0called Lease Management Services, were seized by Lease\u00a0Management when Infochips went out of business in\u00a01993.<\/li>\n
  3. The third transfer occurred in 1995 when Lease\u00a0Management sold the Infochips assets to Mr. Woo, one of\u00a0the three co-inventors.<\/li>\n
  4. The fourth transfer occurred when\u00a0Mr. Woo assigned his ownership interest in the \u2019788\u00a0patent to an entity called AVC Technology Inc. (\u201cAVC\u201d),<\/li>\n<\/ol>\n

    Hsiun’s employment agree provided that she would “hold in trust”<\/strong> for the company and “will assign”<\/strong> to the company all inventions, and quitclaimed<\/strong> any and all claims for infringement.\u00a0\u00a0The district court concluded that these provisions did\u00a0not effect a transfer of Hsiun\u2019s ownership rights to\u00a0Advanced Video.<\/p>\n

    The district\u00a0court found that \u201cwill assign\u201d invoked a promise to do
    \nsomething in the future and did not effect a present\u00a0assignment, and the Federal Circuit agreed.\u00a0 Regarding the trust language, the Federal Circuit said\u00a0even if it determined that Hsiun\u2019s\u00a0interests in the invention were immediately placed in\u00a0trust, it did not follow that those interests were automatically,\u00a0or ever, actually transferred out of trust in favor of
    \nAdvanced Video’s predecessor. Absent a transfer, Hsiun would continue
    \nto hold the invention rights as a trustee.\u00a0 Noting that because Advanced Video\u00a0had not sought to enforce any\u00a0obligation Hsiun might have under the trust, it\u00a0ultimately has no standing to bring a patent infringement
    \naction.\u00a0 The Federal Circuit was similarly unimpressed with the quitclaim assignment of right to sue for infringements, noting that this cannot result in a transfer that did not in fact occur.<\/p>\n

     <\/p>\n

     <\/p>\n","protected":false},"excerpt":{"rendered":"

    In Advanced Video Technologies LLC v. HTC Corporation, [2016-2309, 2016-2310, 2016-2311] (January 11, 2018) the Federal Circuit affirmed the dismissal of an action for infringement of\u00a0U.S. Patent No. 5,781,788 on the ground that a\u00a0co-owner of the patent was not a … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[45],"tags":[],"class_list":["post-1915","post","type-post","status-publish","format-standard","hentry","category-ownership"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1915","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1915"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1915\/revisions"}],"predecessor-version":[{"id":1916,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1915\/revisions\/1916"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1915"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1915"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1915"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}