January 18, 2018
Authored and Edited by Sean D. Damon; Kara Specht; Elizabeth D. Ferrill
In Advanced Video v. HTC, the Federal Circuit affirmed that Advanced Video Technologies (“Advanced Video”) lacked standing to bring an infringement suit because the future-tense “will assign” provision in the Employment Agreement did not effect an assignment.
Advanced Video argued that a co-inventor of the asserted patent transferred her rights to the patent pursuant to three provisions of her Employment Agreement: a “will assign” provision, a trust provision, and a quitclaim provision. The Court disagreed on all three. First, the Court found the “will assign” language alone “does not create an immediate assignment.” Second, the Court found that the trust provision undermined the existence of an immediate assignment because an inventor could not immediately assign patent rights and at the same time hold them in trust. The Court also noted that even if Advanced Video were the beneficiary, under California law, a beneficiary is not the real party in interest, may not sue in the name of the trust, and has no title or ownership interest in the trust. Lastly, although the quitclaim provision waived the co-inventor’s interest in any patent rights that she assigned under the agreement, because no patent rights were ever assigned this provision was inapplicable.
Copyright © 2018 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.