Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Advanced Video Technologies LLC v. HTC Corp.

Failure to Join Co-Owner of Patent Leads to Dismissal

Advanced Video Technologies LLC v. HTC Corp., 2018 U.S. App. LEXIS 682 (Fed. Cir. Jan. 11, 2018) (Newman (dissenting), O’Malley (concurring), REYNA) (S.D.N.Y.: McMahon) (2 of 5 stars)

Fed Cir affirms dismissal for lack of standing. The district court correctly determined that Advanced Video did not hold full title to the asserted patent. The opinion analyzes Advanced Video’s title claim and determines that one of the inventors remained a part-owner of the asserted patent. Applying California law, it rejects Advanced Video’s contention that a trust existed in favor of its predecessor-in-interest surrounding the inventor’s ownership rights. It also rejects Advanced Video’s interpretation of a quitclaim agreement signed by the inventor.

Concurrence: Judge O’Malley agrees in the interpretation and application of California law, but writes to criticize the court’s precedent that a nonconsenting owner of a patent can never be involuntarily joined to a lawsuit pursuant to Rule 19. “In the absence of that errant conclusion, the various questions we address in this case would be irrelevant.” Concur. at 1–2.

Dissent: Judge Newman would have held that any interest the co-inventor had in the patent passed immediately to her employer, and subsequently to Advanced Video, per her employment agreement.

KEYWORDS: JOINDER; STANDING