By Dennis Crouch
James Taylor v. Taylor Made Plastics (M.D. Fla. 2013) Download 2013 WL 1798964
James Taylor is the named inventor of several patents covering plastic used in storm drainage system. See U.S. Patent No. 5,224,514. During his 2006 divorce, the Taylor agreed to equitable distribution of the marital assets including the patents in question here. The agreement also noted that proceeds from the patents would be divided 60/40 in favor of Mrs. Taylor. However, the settlement did not specifically state whether legal title was also divided between the two. The issue of divided legal title is important because of the general rule in patent law that a patent owner cannot bring an infringement allegation without joining all co-owners as co-plaintiffs. And here, Mrs. Taylor refused to participate (presumably because she is part of Taylor Made Plastics).
Following Florida marriage dissolution law, the district court here sided with the defendant and held that Mr. Taylor lacks standing to bring suit.
[S]ince the Patent was issued to the Plaintiff while he was married to Ms. Taylor, the Patent was presumably a marital asset…. The Divorce Settlement merely reinforced that presumption by subjecting the Patent to equitable distribution and awarding Ms. Taylor a 60% interest in any proceeds from the Patent. . . . Since Ms. Taylor has legal title to the Patent under Florida law, and has not been made a party to the action at hand, the Plaintiff lacks standing to sue for infringement.
As a portion of its decision, the court also found that issue preclusion applies in this case to prevent the court from re-examining the question of patent ownership.