CAFC Denies Challenge to Patent Ownership

MyMail v. AOL (Fed. Cir. 2007).

Although patents assignments are registered at the USPTO, state law “governs the question of who has legal title.” Despite an earlier Texas court judgment on this issue, AOL challenged MyMail’s ownership of its patent — alleging fraud.  On appeal, the CAFC sided with the patentee, finding that the earlier Texas judgment settled the matter.  This decision should be seen as contrasting challenges to patent ownership (where prior decisions hold weight) with challenges to patent validity (which can be repeatedly challenged despite prior judgments affirming validity).

Based on a claim construction of the coined term NSP, the appellate panel also affirmed the lower court’s summary judgment of noninfringement.

Notes:

3 thoughts on “CAFC Denies Challenge to Patent Ownership

  1. The reason patent validity can be challenged over and over is one of public policy, expressed I believe, in Blonder-Tongue Labs vs. Univ. of Ill. Invalid patents are such a blight on civilization (ask Mooney or anyone at the WSJ or Slashdot), that we permit validity to be re-litigated over and over, so long as the party asserting invalidity has not been the victim of a prior adverse judgment.

  2. But aren’t plaintiffs usually required to assert or to forfeit each theory of their case in a single proceeding? (The “one bite at the apple” principle?) And appeals can usually only consider issues preserved from trial …

    So while the holding that ‘XYZ patent is non-obvious in light of whatever reference may be res judicata only as to that issue for other plaintiffs, for the instant plaintiff or their privies it should preclude any further debate of validity.

    I only got a B in CivPro … can any one set me straight if I’m wrong here ?

  3. Dennis writes: “his decision should be seen as contrasting challenges to patent ownership (where prior decisions hold weight) with challenges to patent validity (which can be repeatedly challenged despite prior judgments affirming validity).”

    Right, but the reason “challenges to patent validity” can be repeatedly challenged is that prior judgments don’t exactly “affirm validity.” They hold that a particular argument for the patent’s invalidity is no good, and thus the patent is “not invalid.”

    A decision holding that patent ‘XYZ is not obvious in light of references A and B has res judicata effect, but just for that narrow proposition, no?

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