Justia Patents Opinion Summaries

Articles Posted in Education Law
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Decker developed the patented inventions while employed at the University of Texas and assigned the patents to UT. Gensetix obtained an exclusive license in the patents. The license agreement provides that, Gensetix must enforce the patents. The parties agreed to cooperate in any infringement suit and that nothing in the agreement would waive UT's sovereign immunity. Gensetix sued Baylor, alleging infringement and requested that UT join as a co-plaintiff. UT declined. Gensetix named UT as an involuntary plaintiff under FRCP 19(a). The district court dismissed, finding that UT is a sovereign state entity, so that the Eleventh Amendment barred joinder of UT, and that the suit could not proceed without UT.The Federal Circuit affirmed in part. UT did not voluntarily invoke federal jurisdiction; the Eleventh Amendment prevents “the indignity of subjecting a State to the coercive process of judicial tribunals” against its will. It is irrelevant that the license agreement requires the initiation of an infringement suit by Gensetix or cooperation by UT. The court erred in dismissing the suit without adequate analysis of Rule 19(b)'s factors: the extent to which a judgment might prejudice the missing required party or the existing parties; the extent to which any prejudice could be lessened; whether a judgment rendered in the required party’s absence would be adequate; and whether the plaintiff would have an adequate remedy if the action were dismissed. View "Gensetix, Inc. v. Baylor College of Medicine" on Justia Law

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On inter partes review of ATI’s “Unified Shader Patents,” LGE cited multiple prior references. A “shader” as used in this field is a computer-implemented system that specifies how a computer-graphics three-dimensional image is generated and presented on a two-dimensional screen. ATI argued that the invention in each of the three patents preceded the primary reference dates for that patent. In conformity with 37 C.F.R. 1.131, ATI presented evidence of conception, reduction to practice, and diligence for each patent. the Patent Trial and Appeal Board held all but one of the challenged claims unpatentable as anticipated or obvious, The Board held that ATI had not established actual reduction to practice and had not established diligence to constructive reduction to practice, for all three patents. The Federal Circuit reversed, concluding that the Board erred in its application of the law of diligence and that on the correct law, diligence was shown, thereby antedating the relevant references. The undisputed rulings established conception and constructive reduction to practice. View "ATI Technologies ULC v. Iancu" on Justia Law