Motion for Summary Judgment as to Defenses of Improper Inventorship & Derivation

An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.

A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.

Both defenses require proof by clear and convincing evidence.

This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was.  Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.

On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.

Under the Sycamore Tree (there are pretrial motions)

One of the most haunting moments of the season finale of the original Twin Peaks in 1992 was Jimmy Scott singing Under the Sycamore Trees as things got really, really weird. I think of this song whenever I read opinions in Sycamore IP Holdings v. AT&T, which gave us more to consider recently.  Actually, much, much more.

Analyzing willfulness claims/Section 101 denial/expert opinions excluded in part

It’s often helpful to cut something open to see how it works.  During World War II, the Navy cut open a damaged PBY Catalina flying boat and mounted it on a wall in a training facility in Pensacola to help train sailors who would be crewing its sister craft.  The cutaway PBY was a local fixture from 1944 to 1997, and was eventually moved to the nearby National Museum of Naval Aviation to sit under a fully restored version, where my youngest son Parker (who’s a certified WW II plane nut) got to study it up close.  (That I have a PBY on my work bench at the moment had nothing to do with the trip.  Honest)

Readers will recall that I posted last month that a Marshall jury in Judge Roy Payne’s court returned a verdict last month in favor of Ericsson in a case brought against TCL Communications and set damages at $75 million.  Two of the numerous pretrial rulings in that case were on the defendant’s motions for summary judgment under Section 101, and on the plaintiff’s claims of willful infringement, both of which Judge Payne denied.

Since the 101 ruling runs against the recent trend of more than half of 101 rulings going the defendant’s way, it is worth a review.  But the one I really want to focus on is the willfulness ruling because, as the Court wrote, “it is helpful to explain the standard as it stands today [post-Halo]” which began a metaphorical popping off of the fuselage panels on the standard in order to spend several pages poking around on what the wilfulness standard requires, and what factors need to be considered when deciding whether to bifurcate a willfulness claim.  When you’re done reading it, you might find yourself with the same thought I had after studying the interior of a full-size PBY – I have really not understood how this thing fits together, and I have really screwed up ….

Use of Confidential Video Clip Not “Fair Use”

Interesting case this week in which Judge Gilstrap granted the plaintiff’s motion for summary judgment of a “fair use” defense in a copyright infringement case in which the defendant alleged various causes of action arising out of an employment termination, and attempted to use a purloined video clip as evidence.  The facts look like something off Dr. Phil.  In fact, they actually were.

Clickwrap: Motion for Summary Judgment re: Independent Distributorship Agreement

Motions for summary judgment are often used to isolate and dispose of claims that are factually unsupported.  A classic example is where, as here, a contract between the parties is alleged to preclude or limit certain claims or elements of damages.  Such a case was presented in this recent opinion by Judge Mazzant in Sherman in which

Emergency Motion for Summary Judgment on Collateral Estoppel Effect of Prior Noninfringement Verdict Denied

It was just three days ago that I posted on the emergency motion filed by the remaining defendants after last Friday’s noninfringement verdict in Tyler arguing that the verdict against the first defendant collaterally estopped the plaintiff from proceeding against the remaining defendants.  This afternoon Judge Gilstrap denied the motion, and trial will presumably proceed as scheduled on Tuesday.  The attached order makes for a bracing start to the weekend, as I discuss below.