It’s a Good Idea to Actually Own the Patents you Sue on

The following is a guest post by Bryan Wheelock, Principal at Harness, Dickey & Pierce.  He originally published it on the HDP Blog. – Dennis

In National Oilwell Varco, L.P. v. Omron Oilfield and Marine, Inc., [2015-1406] (January 25, 2017), in a non-precedential opinion, the Federal Circuit affirmed the dismissal of claim for infringement of U.S. Patent No. 5,474,142 because of problems with the chain of title which deprived NOV of standing.

Bobbie Bowden, the named inventor on the ’142 Patent assigned the patent to Wildcat Services, L.P., on October 9, 2001.  Wildcat Services, L.P. assigned the ’142 Patent to MD/Totco, a Division of Varco, L.P., on June 30, 2004.  NOV claimed it purchased the ’142 Patent from Varco, L.P., pursuant to an Asset Contribution Agreement dated January 1, 2006.

NOV initially refused to produce the ACA, instead producing only a “Assistant Secretary’s Certificate,” which assigned only “physical assets.”  After being forced to produce the ACA, Omron renewed its motion to dismiss for lack of standing.  The district court agreed that that NOV could not prove ownership of the ’142 Patent as of the filing date of this case, and dismissed the case, with prejudice, for lack of standing.

The Federal Circuit agreed with the District Court, noting that the ACA contains no reference to patents except within Exhibit A, which had a column labeled “Patents – Patents.”  The Federal Circuit said that the district court correctly interpreted the ACA to find that its plain meaning did not include transferring the ’142 Patent from Varco, L.P. to NOV because the Exhibit A spreadsheet shows a “0” where the patents row intersects with the MD/Totco column.  The Federal Circuit concluded that a plain reading of the ACA reveals that it did not transfer the ’142 Patent from MD/Totco to NOV.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

28 thoughts on “It’s a Good Idea to Actually Own the Patents you Sue on

  1. OT, but for those who like to think of the universe as static (tied to the notion of “new” in 101):

    link to forbes.com

  2. And all this, just because of a stray (default?) zero value “o” in a spreadsheet table?

    Strikes me as an enormous load of responsibility to place on a little old typo.

    1. I don’t think that the presence of the “0” was either stray or a typo, MaxDrei.

      The “0” was in the table of patent properties to be transferred.

      If indeed it were either stray or a typo, there would also have been the patent properties listed.

      1. I had in mind that, absent to positive presence of a statement that there were “zero” patents, one might have to divine from the rest of the circumstances whether (objectively or subjectively) the signed instrument was effective to transfer such patents as might be extant.

        Why did I have this in mind? Because the court relied upon the positive presence of the statement zero patents, to come to its conclusion. So, deprive the court of that justification for its Decision, and where does that leave you?

        1. What you had in mind makes no senses to anyone that has ever composed a list of items to be transferred.

          Why you had that in mind is a question that frankly does not interest me.

  3. If only there were some sort of government agency that received and kept documentation on file that shows evidence of patent assignments.

    1. Lol – Big Brother approves and wants ALL personal property registered and tracked.

      As Malcolm so often asks, what could go wrong?

      1. ( I could also mention that since patents are not “property” – supposedly – that any such attempts at even recognizing “ownership” are inherently flawed – which would leave it up to the State to pursue (and pay) any alleged infringers…)

        😉

      2. Big Brother approves and wants ALL personal property registered and tracked.

        Because “anon” is s00per d00per concerned about living in an Orwellian world. Hence his imaginary “protest vote” for Bernie Sanders, and his conspicuous dismay when anyone dares criticize Preznit Asterix.

        Yes, he’s a very serious person!

        Also clinically paranoid and prone to flip out like a three year old when you bring up s00per d00per controversial t0pics like a requirement that assignments of patents be made public but, hey, absurdly entitled self-dealing patent attorneys are really a class unto themselves. We’ve been laughing at them for years.

        1. Nice try at twisting things Malcolm – so sorry that reality just does not match your script.

          1. reality just does not match your script.

            Says the guy ranting about “Big Brother” tracking everybody’s property.

            Too funny.

            1. Lol – open your eyes son, and tell me why tracking ANY personal property can distinguish the point presented….

              1. tell me why tracking ANY personal property can distinguish the point presented….

                Tell ME why tracking ORANGES when a VEST has NO sleeves.

                Very deep stuff, “anon”! Please keep up your very serious efforts defending the worst attorneys who ever practiced law, anywhere! You make patent maximalism beautiful.

                1. Your poker tell of “very deep” does not even begin to answer the question put to you.

                  Please try again.

                  Heck, even take a swing at the “patents are not personal property” angle, if you would prefer.

                  But the vap1d non-reply is just a waste of everyone’s time (including your own).

      3. Well I mean you know anon, Big Brother is the one that is creating and all that this “personal property” in the first place.

        1. Actually 6, it takes two to do that (that whole thing about the Quid Pro Quo and all).

          Unless of course you now think that there is no such thing as the Quid Pro Quo and that your attempt to denigrate by “entitlement” mantra has gotten the better of you…

    2. Which agency shows the patent in suit as owned by MD/Totco.

      1. There already is one available (as you no doubt know :-) ), that does so at the discretion of the patent owner.

        Anything more is nothing but officious over reach.

        1. A patent owner who fails to exercise its discretion to record is being incredibly foolish.

          Or, as here, it’s not actually an owner.

          1. Very true in both instances, Brennan.

            But that is up to the person who has such personal property, is it not?

            Or do we now insist on some nanny state to “take care of” such personal things?

            1. (Or is “taking care” of such things for something other than the care of the person, and is being advanced with some ulterior motive?)

  4. MTD granted for lack of standing due to patent ownership. Ouch. Seems like a model case for attorney fee shifting. Sanctions?

    1. Every prevailing party thinks their case is “exceptional” these days and seeks attorney fees. But unless a case settles, there will always be a winner and a loser in litigation. Merely losing a case does not make it exceptional.

      The plaintiff in this case, however, should have notified the court and opposing counsel as soon as they discovered the title defect. That probably would have avoided the attorney fee award.

      1. NOV claimed it purchased the ’142 Patent from Varco, L.P., pursuant to an Asset Contribution Agreement dated January 1, 2006.

        NOV initially refused to produce the ACA

        Gee, I wonder why.

        1. Don’t confuse an incidence of CRPy behavior with some necessity of even more CRPy officious behavior.

    1. The defendant, absent a court order.

    2. Also, I just started reading the opinion:
      District court “awarded attorney fees to Omron based
      on the exceptional nature of NOV’s litigation conduct”

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