Intellectual Property Law

Chief Judge Gregory M. Sleet: Alleged Equitable Interest Insufficient for Purposes of Standing

By Karen E. Keller, Andrew A. Lundgren et al.

Chief Judge Sleet recently decided a case where plaintiff, a law firm that had helped to prosecute a patent, tried to claim an equitable interest in the patent after their client?s alleged failure to pay their fees. Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS, at 1 (D. Del. Sept. 18, 2009). The firm then tried to make an infringement claim against a subsequent assignee based on the firm?s supposed equitable interest. Id. at 3-4. Chief Judge Sleet denied both claims, noting that the firm?s engagement letter said nothing about a potential assignment of the patent or any equitable interest in it. Id. at 7. While the firm had filed a "Notice of Equitable Claim" with the PTO, that filing was ?inconsequential? standing alone, as it was signed only by the firm. Id. The court also rejected Huntley's claim of a "grantor's lien" in the patent, pointing out the lack of legal support for "this rather novel proposition." Id. at 7-8. With plaintiff having no interest in the patent, Judge Sleet granted defendant's motion to dismiss for lack of standing. Id. at 8.

Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS (D. Del. Sept. 18, 2009).

Full post as published by Delaware IP Law Blog on September 25, 2009 (boomark / email).