STC.UNM v. Intel Corp.

The 321 patent, titled “Method for Manufacture of Quantum Sized Periodic Structures in Si Materials,” resulted from contributions of Brueck, Zaidi, Chu, employed by UNM, and Draper, employed by Sandia, and issued in 1998. In 1996, the four executed an assignment to UNM that defined all assignors as employees of UNM. UNM executed an assignment to Sandia to correct Draper’s assignment. While the 321 application was pending, in 1997, Brueck and Zaidi filed the application that led to the 998 patent, titled “Method and Apparatus for Extending Spatial Frequencies in Photolithography Images.” The application incorporated the 321 patent by reference, but did not claim priority to any earlier application. Draper was not listed as an inventor and had no inventive contribution. UNM obtained assignments from Brueck and Zaidi. During prosecution the PTO rejected claims for double patenting. UNM filed a terminal disclaimer, which specified that “any patent granted on this instant application shall be enforceable only for and during such period” that the 998 and 321 patents “are commonly owned.” UNM stated that it was the owner of a 100 percent interest in the application. The 998 patent issued in 2000. In 2008 successfully sought a certificate of correction indicating that the 998 patent is a continuation-in-part of the 321 patent. In 2010 UNM filed an infringement suit concerning the 998 patent. Although Sandia had an ownership interest since the Draper Assignment, Sandia had never claimed any interest in the 321 patent. The district court dismissed for lack of standing. The Federal Circuit affirmed. Sandia did not voluntarily join as a co-plaintiff and could not be involuntarily joined. All co-owners must ordinarily join in an infringement suit .View "STC.UNM v. Intel Corp." on Justia Law