Waterman v. Mackenzie

17 Citing briefs

  1. Rembrandt Diagnostics, LP v. Alere, Inc. et al

    MOTION to Dismiss for Failure to State a Claim and Lack of Standing

    Filed September 1, 2016

    (citations and internal quotation omitted); Waterman, 138 U.S. at 256 (“Whether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions.”)

  2. Max Sound Corporation, et al v. Google, Inc., et al

    MOTION to Dismiss Pursuant to FRCP 12

    Filed December 11, 2014

    The Supreme Court has long recognized that a patent owner is an indispensable party to an infringement suit brought by his licensee and that litigation should not proceed in the absence of the patent owner as a party. See Waterman, 138 U.S. at 255. By its own admission, Max Sound does not own the asserted patent: “VSL is the owner by assignment of all rights, title, and interests in the Asserted Patent, and is entitled to sue for past and future infringement thereof.”

  3. Monosol Rx, Llc v. Biodelivery Sciences International, Inc.

    BRIEF in Opposition

    Filed May 1, 2017

    For example, at the outset of its argument, the Motion relies on superseded law. In particular, the Motion cites Waterman v. Mackenzie, 138 U.S. 252 (1891), for the allegedly “well settled” principle that an exclusive licensee must join the patent owner in infringement suits. Br.

  4. Script Security Solutions, L.L.C. v. Amazon.Com, Inc. et al

    BRIEF

    Filed November 23, 2016

    Despite Its Title, the Transfer of Patent Rights to GuardIt Was a License, Not an Assignment Whether a transfer of rights in a patent is an assignment or a license depends on the substance of the agreement, not what the agreement calls itself. Waterman v. Mackenzie, 138 U.S. 252, 256 (1891). An “assignment” is in fact a license if it transfers less than all substantial rights, an undivided share of those rights, or rights only in a geographical region.

  5. Max Sound Corporation, et al v. Google, Inc., et al

    MOTION to Dismiss Pursuant to Federal Rule of Civil Procedure 12

    Filed August 28, 2015

    C (E-mail from C. Nash to M. Guo (Aug. 12, 2015)) 3 The lack of participation by Patent Owner is an additional ground for dismissal or stay of this litigation, as the Supreme Court has long recognized that licensees—which Max Sound is not— should not proceed in the absence of the patent owner as a party. See Waterman v. Mackenzie, 138 U.S. 252, 255 (1891); see also Star Navigation Sys. Grp.

  6. Driessen v. Sony Music Entertainment et al

    REPLY to Response to Motion re First MOTION to Amend/Correct 1 Complaint

    Filed September 22, 2010

    This gives Mrs. Driessen equitable ownership rights under Utah law. 7 Under Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334, 34 L.Ed. 923 (1891), it was determined that standing in a dispute among an inventor's spouse and various assignees turned on ownership, not inventorship, of the asserted patent.” Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1471 (Fed. Cir.

  7. DePuy Mitek, Inc. v. Arthrex, Inc.

    Opposition re MOTION in Limine

    Filed July 24, 2007

    "A transfer of less than one of these three interests is a license, not an assignment of legal title, and it gives the licensee no right to sue for in- fringement . . . in the licensee's own name." 56 F.3d at 1551-52 (citing Waterman, 138 U.S. at 255). [HN6] Beyond assignees, only exclusive licensees have a rightful place in patent infringement suits.

  8. Days Corporation v. Lippert Components Inc

    BRIEF in Support of 18 MOTION to Dismiss

    Filed May 8, 2017

    Non-exclusive licensees and even exclusive licensees with less than all the substantial rights in a patent lack standing to sue for infringement. Waterman v. Mackenzie, 138 U.S. 252, 255 (1891). As set forth above, the ’385 and the ’924 patents are owned by IDS.

  9. Leitner-Wise v. Lwrc International, Llc et al

    MOTION to Dismiss for Failure to State a Claimand Lack of Standing, or, in the Alternative, for Summary Judgment

    Filed September 6, 2016

    See, e.g., 35 U.SC. § 261; Waterman v. Mackenzie, 138 U.S. 252, 255 (1891); Intellectual Property Develop., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1345 (Fed. Cir. 2001) (citing 35 U.S.C. § 261)).

  10. Protegrity Corp v. Dataguise, Inc.

    MOTION for Joinder of Protegrity USA, Inc. as Party-Plaintiff

    Filed September 17, 2014

    Id. (citing Waterman v. Mackenzie, 138 U.S. 252 (1891)); see also Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998).