Court Dismisses Patent Case because Co-Inventor Not a Party

US08424897-20130423-D00000-300x189The US District Court for the Southern District of California dismissed a patent infringement case for lack of jurisdiction because a co-inventor on the patent was not joined as a party.

In 2013, plaintiffs Alpha One Transporter, Inc. and American Heavy Moving and Rigging, Inc. filed a complaint against defendant Perkins Motor Transport, Inc.

The complaint alleged infringement of US Patent No. 8,424,897 for a “Dual lane multi-axle transport vehicle” for transporting heavy loads.

The ‘897 patent is a continuation-in-part of a provisional patent application filed in 2002, and the ‘897 patent claims priority based on the provisional patent’s filing date.

Perkins moved to dismiss, asserting that Alpha One lacked standing to sue for infringement of the patent because one of the inventors, James McGhie, hadn’t assigned his rights in the patent to Alpha One and was not a party to the lawsuit.

Alpha One countered that McGhie’s prior assignment of the 2002 provisional also established ownership of the ‘897 patent.

The court noted that the burden was on Alpha One to establish that it had the necessary ownership rights to support its standing to sue to enforce to ‘897 patent.

McGhie assigned his rights in the provisional in writing in 2002. His assignment provides Alpha One with “the full and exclusive right, title, and interest in and to said invention, in and to said application, and in and to any Letters Patent to be granted and issued thereon….”

However, the court noted that a “continuation in part” patent application includes “new matter.” Thus, the ‘897 patent does not describe the same “invention” that was assigned by McGhie in 2002.

Thus, the court concluded that the assignment of the provisional did not give Alpha One rights in the later ‘897 patent, and thus that Alpha One lacked standing to enforce that patent.

The fact that McGhie was contractually required to assign his rights in his invention did not create a present right to the patent for Alpha One.

As we’ve noted in a previous blog, confirming patent ownership is an important step in patent litigation that needs to happen before the party claiming infringement brings suit. Otherwise, while the life of the patent is ticking away, the putative owner can waste time and money on a non-viable enforcement action.

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