Federal Circuit Finds Assigned “Inventions and Discoveries” Extends to Continuation Applications

In MHL Tek, LLC v. Nissan Motor Co., 99 USPQ2d 1681 (Fed. Cir. 2011), MHL Tek, LLC (“MHL”), the controversy surrounds the ownership of U.S. Patent Nos. 5,663,496 (“the ′496 patent”), 5,741,966 (“the ′966 patent”), and U.S. Patent No. 5,731,516 (“the ′516 patent”), all of which relate to a tire pressure monitoring system (“TPMS”) and have the same inventors.  Two of the patents, the ‘496 and ‘966 patents, are divisionals of the same parent application (the “Parent Application), while the third patent, the ‘516 patent, has a separate specification from the ‘496 or ‘966 patents or to the Parent Application. The Parent Application was filed on August 3, 1993, while the ‘496 and ‘966 patents were both filed on June 6, 1995, and the ‘516 patent was filed on May 2, 1996.  On August 5, 1993, two days after the Parent Application was filed, the inventors executed an assignment to Animatronics, Inc. (“Animatronics”), assigning all rights to “the inventions and

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Federal Circuit Affirms that the Right to “Make, Use, And Sell” a Licensed Product Inherently Includes Right to have that Licensed Product Made by a Third Party.

In CoreBrace v. Star Seismic, 566 F.3d 1069 (Fed. Cir. 2009), CoreBrace owned U.S. Patent 7,188,452 (“452”) which claims a brace for use in the fabrication of earthquake-resistant steel-framed buildings.  The inventor of the 452 patent and Star entered into a “Non-exclusive License Agreement” (“license”) through which Star received a license under the 452 patent.  The inventor later transferred his interest to CoreBrace.  The license to Star grants it a non-exclusive right to “make, use, and sell” licensed products.  Star did not explicitly have the right to have the licensed product made by a third party.  Further, the license explicitly stated that Star may not “assign, sublicense, or otherwise transfer” its rights to any party other than an affiliated, parent or subsidiary company.  The license also reserved to CoreBrace “all rights not expressly granted to” Star.  The license further provided that if a breach occurred, the license could be terminated after written notice of the breach and a thirty-day opportunity

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District Court Finds Joint Venturer Not “a Subsidiary” As Defined in License Agreement

In Nano Proprietary, Inc. v. Canon, Inc., Case No. A-05-CA-258-SS (W.D. Tx. November 14, 2006), Nano owns patents on electron field emission display (FED) devices, which are used in flat screen televisions.  In 1998, Nano approached Canon, proposing to enter a joint development and licensing agreement for Canon and its subsidiaries to use Nano’s technology to develop flat screen displays.  Canon initially rejected Nano’s offer.  Instead, Canon and Toshiba began to negotiate a joint venture to make flat screen displays using a subset of FED technology called ‘SED’.  Nano contends that SED devices are covered by the FED patents. While conducting secret negotiations with Toshiba, Canon returned to Nano and obtained a non-exclusive, non-transferable right to use Nano’s FED patents.  This Patent License Agreement prohibited sublicensing, but permitted Canon to share the technology with subsidiaries.  The license agreement specifically defined a subsidiary as any company or entity which Canon “(a) owns or controls directly or indirectly more than fifty percent

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