In order for a patent assignee to recover damages for infringement occurring before the assignee obtained ownership of the patent, the assignment must expressly so state. The Supreme Court said “it is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.” Moore v. Marsh, 74 U.S. (7 Wall.) 515, 522 (1868).
This is illustrated in the case of Messagephone, Inc. v. Svi Sys., Nos. 99-1471, 99-1478, 2000 U.S. App. LEXIS 19976 (Fed. Cir. 2000). Messagephone sued Svi Systems and Holiday Inn Express alleging infringement of U.S. Patent Nos. 5,323,448 and 5,475,740. These patents were directed to a system that enables hotel guests to order certain amenities, such as movies, in their hotel rooms without incurring charges on their hotel bill.
When the patents where granted in 1994 and 1995, they were assigned to Spectradyne, Inc. On November 7, 1996, Spectradyne assigned title in the patents to Messagephone. This assignment granted Messagephone the “entire right, title, and interest” in the patents. But the assignment was silent regarding Messagephone’s right to sue for infringement that occurred before that date. The Court found that since the assignment did not expressly grant Messagephone’s right to sue for infringement occurring before the date of the assignment, Messagephone could not do so.
The court said, “As a general rule, only a party that possessed legal title to a patent at the time the infringement occurred can bring suit to recover damages for such infringement.” It continued, “A narrow exception to the foregoing rule is that a party may sue for infringement transpiring before it acquired legal title if a written assignment expressly grants the party a right to do so; that right, however, must be articulated explicitly in the assignment and will not be inferred by the court.”
Messagephone tried to fix this, after the lawsuit was filed, by executing a nunc pro tunc (retroactive) assignment of the right to sue for past infringement. But the court said executing it after the lawsuit was filed was too late.
The lack of express language assigning the right to sue for past infringement and damages cost Messagephone one or two years worth of damages, which could be substantial.
If the assignee desires to pursue claims for past infringement occurring before the date of the patent assignment, the patent assignment should include expressly the right to sue and recover for past infringements and damages.
An agreement to assign is not the same as a present assignment of a patent or patentable invention and does not have the same effect. An agreement to assign often requires the execution of an additional assignment to transfer legal title, whereas a present assignment does not. It is possible to assign rights to future patentable inventions with the proper language.
In many cases, one will want to avoid executing a further assignment to gain legal title, and prefers the assignment to occur on the execution of one document. Why? Because what if the inventor / intended-assignor is later unavailable or uncooperative? The situation is then more complicated, expensive, and time consuming. In some cases, litigation may be necessary to force the inventor/assignor to execute an assignment or to otherwise vest an intended-assignee with legal title.
While the applicable state law usually determines the interpretation of an agreement regarding patent ownership, Federal Circuit law determines whether an agreement effects a present assignment of a patent. Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 583 F.3d 832 (Fed. Cir. 2009). The following cases demonstrate the difference between the language of: “shall be …exclusive property of”, “agrees to assign,” “will assign,” and “hereby assigns.”
“Shall Be and Remain Exclusive Property Of“
Two inventors were named on US Patent 6,075,451: Mayer Micheal Lebowitz and James Seivert. Without an agreement or rule of law otherwise, the co-inventors are presumptive joint legal owners of the patent. 35 USC 116, 262.
After the inventors died, Tobi Gellman as trustee of the Mayer Micheal Lebowitz Trust sued Telular Corporation among others for infringing the patent in the case of Gellman v. Telular Corp. 449 Fed. Appx. 941 (Fed. Cir. 2011). Gellman claimed the Trust was the sole owner of the patent. The defendant(s) claimed the case had to be dismissed because the Trust was not the full owner of the patent.
Gellman claimed that Mr. Seivert was an employee of Mr. Lebowitz at Cellular Alarm and that the terms of his employment included full transfer of rights to any resulting inventions. However, the evidence of this comprised an unsigned agreement titled “agreement for consulting services.” That agreement provided as follows:
“[A]ny and all ideas, discoveries, inventions, [etc.] . . . developed, prepared, conceived, made, discovered or suggested by [Mr. Seivert] when performing services pursuant to this Agreement . . . shall be and remain the exclusive property of Cellular Alarm. [Mr. Seivert] agrees to execute any and all assignments or other transfer documents which are necessary, in the sole opinion of Cellular Alarm, to vest in Cellular Alarm all right, title, and interest in such Work Products.” (emphasis added).
The court found that even if the agreement had been signed, the language of the agreement did not effect a present transfer of ownership. The language of “shall be and remain the exclusive property” is not the same as “hereby assigned.”
Gellman argued the “remain” language indicated the invention had been fully conveyed previously. However the court found that Mr. Seivert’s contributions to the inventions remained only in equitable status until such time as Mr. Seivert “execute[d] any and all assignment or other transfer documents which are necessary . . . to vest in Cellular Alarm all right, title and interest in such inventions.” The agreement at most created an equitable obligation of Mr. Seivert to assign to Cellular Alarm. That equitable title could be converted to legal title (legal ownership) if and when Mr. Seivert actually assigned or, if necessary, through a law suit to force Mr. Seivert to execute an assignment. This did not happen. And the case was dismissed because the Trust did not have full legal title to the patent.
“Hereby Assign” v. “Agree to Assign”
It is possible for an employee to assign any and all of his or her rights to future patentable inventions. But the assignment must expressly undertake the assigning act at the time of the agreement, and not leave it to some future date.
Before visiting Catus Holodniy signed a Copyright and Patent Agreement (“CPA”) with Standford. The CPA provided, “I agree to assign or confirm in writing to Stanford and/or Sponsors that right, title and interest in . . . such inventions as required Contracts or Grants.”
Later, when visting Catus, Holodniy signed a visitor confidentiality agreement (“VBA”) which provided, “I will assign and do hereby assign to CETUS, my right, title, and interest in each of the ideas, inventions and improvements.”
Standford secured patents naming Holodniy as an inventor. Standford sued Cetus’s successor, Roche, for infringement. Roche defended on the ground that it owned the interest of Holodniy in the patent based on the assignment provision of the VBA.
The court found that the “agree to assign” language of the first CPA to Standford was not a present assignment. Instead, it was only a mere promise to assign rights in the future. It was not an immediate transfer of expectant ownership interests. Standford might have an equitable claim against Holodniy, but Standford did not immediately gain legal title to Holodniy’s inventions as a result of the CPA.
In contrast, the court found that the “do hereby assign” language of the VBA to Cetus effected a present assignment of Holodniy’s future inventions to Cetus.
Therefore, at the time of the lawsuit for infringement, Roche–Cetus’s successor– had Holodniy’s rights in the patents and Standford did not. This demonstrates a big difference between “agrees to assign” and “do hereby assign”. The former requires additional step(s), such as the signing of another assignment document, to carryout the transfer of title/ownership, whereas the latter does not require any further step to transfer legal title in the invention.
Other cases where the language did not provide a present assignment are:
Advanced Video Techs. LLC v. HTC Corp., 879 F.3d 1314, 1317-18 (Fed. Cir. 2018) (“will assign to the Company” does not create an immediate assignment);
IpVenture, Inc. v. ProStar Computer, Inc., 503 F.3d 1324, 1327 (Fed. Cir. 2007) (employment agreement providing that the employee “agree[s] to assign” was not a present assignment); and,
Arachnid, Inc. v. Merit Indus., 939 F.2d 1574, 1580-81 (Fed. Cir. 1991) (“will be assigned” does not constitute a “present assignment of an existing invention” or “a present assignment of an expectant interest”).
Other cases where the Federal Circuit found the language of “does hereby assign” or “hereby grant” sufficient to effect an automatic transfer of later arising patent rights, include:
DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008) ( “does hereby grant and assign”);
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1253 (Fed. Cir. 2000) (“hereby conveys, transfers and assigns”);
The hereby assign language effects a present assignment, according to the Federal Circuit, and should better avoid the need of executing further documents to transfer legal title to a patent or patentable invention. Even though an additional assignment or assignment conformation is often executed when a patent application is filed, including the present assignment language in an earlier employment or consulting agreement is a prudent step in case the inventor / intended-assignor is later unavailable or uncooperative.
The way that a design is presented in a design patent is critical. Design patent drawings are often line drawings. But photographs are also allowed. And some patents use computer generated images.
Yet, while photographs and computer generated images may provide more details than line drawings, they are likely to be more limiting. The more details in the design drawings the more possible differences a competitor could develop. Details in a design patent are a double edged sword, more details provide increased options for distinguishing prior art, but may result in more narrow protection as shown in the case below.
Think Green Ltd. sued Medela AG asserting that Medela’s breast pump infringed its design patent US D808,006 (the ‘006 Patent). Below is figure 9 (first/left) from the ‘006 patent and Medela’s pump (second/right).
Medela’s pump is transparent. The images of the ‘006 patent are computer generated images. Think Green argued that the ‘006 patent covered transparent objects. The court disagrees.
According to MPEP rules, surface shading lines are used to “indicate “character and contour,” including “to distinguish between any open and solid areas of the article.” On the other hand, the court notes that other “courts have held that when a patent fails to specify a limitation, in other words, when it is blank and does not include surface shading, the patentee is entitled to the broadest reasonable construction.” For example, in an older case from the 6th Circuit, that court found a blank surface without oblique lines could claim a transparent, translucent, or opaque surface, or both. Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 912-13 (6th Cir. 1979).
The court in the Think Green case concluded “an inventor intending to claim a generically opaque surface, and not any particular material type, would use a line drawing with a blank surface, free of anything but contour lines, thereby claiming both an opaque and transparent surface.” Therefore, the court found the ‘006 Patent computer generated images “must be interpreted to claim an opaque object to the exclusion of translucent or transparent objects.”
The court then found that Medela’s pump was not substantially the same as the design of the ‘006 Patent and did not infringe. The court said:
“Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, the Court finds that an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are “plainly dissimilar” and could not be confused by an ordinary observer. … Indeed, whether an object is opaque or translucent is one of the most obvious and prominent characteristics of any object.” Think Green Ltd. v. Medela AG, No. 21 C 5445, 2022 U.S. Dist. LEXIS 184040 (N.D. Ill. Oct. 7, 2022)
Now, compare the drawings of the ‘006 patent to the following drawings from two patents owned by Lego A/S.
The first drawing (left) from US Patent D951366 (‘366 patent) shows a toy building element presented in a traditional black and white line drawing. The second drawing (right) from US Patent D951365 (‘365 patent) is a photograph, showing the toy building element is transparent or at least translucent.
The ‘365 patent clearly covers a transparent or translucent toy building element, but probably does not cover an opaque product under the reasoning in the Think Green case.
But does the ‘366 patent cover transparent or translucent products? The reasoning in the Transmatic, Inc. and Think Green cases indicates it does.
Yet, the MPEP provides that “oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror.” MPEP 1503.02(II).
What is oblique line shading? The following is an example of oblique line shading for black and white line drawings showing transparent surfaces, from the USPTO Design Patent Application Guide:
Does the failure to use oblique line shading in line drawings limit the claimed design to opaque surfaces? A number of district courts have said no and followed Transmatic.
One court said: “the relevant section [1503.02(II)] of the MPEP only specifies that an inventor wishing to limit a particular surface to a transparent, translucent, or reflective material must indicate the surface through the use of oblique lines. It does not state that failure to include oblique lines necessarily excludes the use of a transparent surface.” Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 U.S. Dist. LEXIS 105125, at *24-25 (N.D. Cal. July 27, 2012). Other district courts have agreed in Water Tech., LLC v. Kokido Dev. Ltd., No. 4:17-cv-01906-AGF, 2019 U.S. Dist. LEXIS 42420, at *42-44 (E.D. Mo. Mar. 15, 2019) and Lifted Ltd., Ltd. Liab. Co. v. Novelty Inc., Civil Action No. 16-cv-03135-PAB-GPG, 2020 U.S. Dist. LEXIS 92102, at *19-20 (D. Colo. May 27, 2020).
The drawings of design patent D556396 in the Water Tech case that were construed to encompass both opaque and transparent surfaces includes:
Why would Lego file for the ‘356 patent with photos of the transparent product if the line drawing version in the ‘366 patent is sufficient to cover transparent and opaque surfaces according to the cases above? There are at least a few reasons. First, if the prior art invalidates the broader line drawing version of the ‘366 patent, possibly the ‘365 patent would survive on the basis of the specifically claimed transparency (there is some uncertainty on this issue as well but see In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001)). Second, it appears the Federal Circuit has not ruled directly on whether line drawings cover transparent and opaque surfaces. Therefore, if the Federal Circuit would decide line drawings do not cover transparent surfaces or the law would otherwise change in this direction, Lego would be covered by the patent specifically showing transparency. Third, possibly it makes it easier marginally to succeed on a patent infringement case because the transparency in the design patent drawings makes them look more like the accused transparent product. In theory this last aspect should not matter if a judge instructs that the design patent covers transparent and opaque surfaces. Yet, it nevertheless may be marginally easier.
Appropriate line drawings provide a better chance of covering transparent surfaces as compared to photos or computer images of products with opaque surfaces. Yet, if transparent surfaces are important to the design, they can be specifically indicated in the drawings by the use of oblique line shading and accompanying text description or a photo showing a transparent product such as in Lego’s ‘365 patent above.
Sharidan Stiles was selling her Stiles Razor, a disposable razor with a narrow blade, through Walmart. But the sales of her product were allegedly not meeting Walmart’s expectations. Walmart stopped selling Stiles Razor and began selling another narrow blade razor, the “Micro Razor,” provided by American International Industries. Silts sued Walmart and American for design patent infringement, among other claims.
The commonalities of a narrowed and angled head, a elongated handle, and a gripping surface, are factored out as functional. That leaves the ornamental aspects, about which the court says differ on the whole:
“First, the grip: in the American design, the grip is much wider than the handle, but in only one dimension, and the bulge has a diamond-like shape. In the Stiles design, by contrast, the grip is a cylinder with a constant radius, as described above. The American grip is also contoured and textured, whereas the Stiles grip is angular and smooth. Second, the end of the handle: the American design is rounded; the Stiles design is flat. Overall, these and other features give the American razor a flowing, contoured look and the Stiles Razor an angular, minimalistic look.”
Therefore, the court found that the Micro Razor did not infringe the patent.
The transfer of rights in a patent generally fall into two categories: an assignment and a license. The transfer is usually accomplished by an agreement.
Whether the agreement at issue is an assignment or a license matters because generally an assignee can sue for infringement alone, while a licensee of less than substantially all of the patent rights cannot sue for infringement alone without the patent owner.
A patent grants the owner certain rights, such as the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. 35 U.S.C. Â§ 154(a)(1)
Usually, an assignment transfers all of the rights* of one party in a patent to the recipient (the assignee). Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991); 35 USC 261. Also, a transfer of substantially all of the patent rights can be considered an assignment for the purposes of standing to sue for infringement. A transfer of less than substantially all of the rights, is a mere license. It is the content and legal effect of the agreement that determines whether it is an assignment or license, not its title.
In the Vaupel case, the court found the agreement at issue there transferred substantially all of the rights in the patent, where the seller retained the following rights: “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.” Therefore, despite the seller retaining these rights, the agreement at issue was considered an assignment.
In contrast, in Sicom Sys. v. Agilent Techs., Inc., 427 F.3d 971, 978-979 (Fed. Cir. 2005), Canada licensed the patent at issue to plaintiff Sicom. The court found the license did not transfer substantially all of the rights, where Canada reserved the right to use the patented technology itself, to veto Sicom’s reassignment of its rights, and to sue for non-commercial infringement. Canada also retained legal title to the patent.
The line between a transfer of substantially all of the rights and less than substantially all of the rights is gray. Ignoring this issue and simplifying it, an assignment usually transfers everything (including legal title) whereas a license grants less than all of the rights and reserves rights to the person or entity granting the license.
*The Supreme Court has also said that the transfer of an undivided portion or share of a patent can also be an assignment, but then assignor and assignee must act together to sue for infringement. Waterman v. Mackenzie, 138 U.S. 252 (1891).
The complaint shows the following image of Skyline’s alleged pepper spray infringing product. The product does not have rhinestones on the bottom as compared to the cylindrical side.
However the design of the ‘172 Patent has rhinestones on the bottom, as shown in figure 3.
The district court granted summary judgement of non-infringement finding that the Skyline product did not infringe the ‘172 patent.
The court said that “the accused product has no rhinestones on the canister bottom … This difference is significant, particularly given the relatively simple and limited elements of the product design, and would be obvious to an ordinary observer.”
You might think that the bottom of the product is not that important and differences in the bottom should not weight heavily when comparing an alleged infringing product to a design patent. But this case shows that even the bottom of a product might be important in a design patent case.
If the bottom or the back of your design is not important, then consider whether it should not be claimed by presenting it in broken lines.
In this case, it may be that the bottom is important because the bottom is where the key ring attaches on the pepper spray product. Therefore, the bottom could be in view to the user often in normal use.
When discovering a solution to a problem, it is not uncommon to think, “Why didn’t I think of this earlier?” The question arises with inventions in general: “Why didn’t someone invent this earlier?”
Jason Crawford attempts to answer that question for bicycles in an post titled, “Why did we wait so long for the bicycle?” He considers a number of possibilities, such as technology factors, design iteration, the quality of roads, competition from horses, and economic factors.
Crawford dates early references to human powered four wheel vehicles to the 1400s. He says it wasn’t until 1817 that that a two wheel ancestor to the modern bicycle was invented by Karl von Drais, which he called Laufmaschine, or “running machine. ” It had a wood frame, no peddles, and was powered by pushing off the grounds with one’s feet. Drais was an aristocrat with free time to tinker.
But the key advance over the Laufmaschine was the addition of peddles, which didn’t arrive for decades (maybe between 1839 and 1860).
And chains and gearing reportedly didn’t arrive until still later in the 1880s.
Crawford, considers whether the technology had not yet advanced sufficiently to allow the modern bicycle to become an adjacent possible. In other words, maybe “advanced metalworking was needed to make small, lightweight chains and gears of high and consistent quality, at an acceptable priceâ€”and that no other design, such as a belt or lever, would have worked instead.” Further, maybe inflatable (pneumatic) tires, which arrived around 1888, were important.
However, Crawford discounts the technology cause, at least somewhat, after considering other inventions, such as the cotton gin, and the flying shuttle, that took a long time to arrive and their prior invention didn’t appear to be limited by the state of technology.
Crawford concludes the need for economic surplus was one of the main contributors to the delay in the arrival of the bicycle. Nassim Talab has also noted this when he said, “Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation.” Talab notes that many inventions originated from the English clergy, whom had extra time on their hands.
Crawford says, “it seems that there needs to be a certain level of surplus to support the culture-wide research and development effort that creates inventions.” He also notes that “Maybe GDP per capita just has to hit a certain point before people even have time, attention and energy to think about new inventions that arenâ€™t literally putting food on the table, a roof over your head, or a shirt on your back.”
This fits with Nicola Tesla’s explanation of the importance of having time to both develop ideas and let them incubate, when he said, “After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head.”
Inventing is probably facilitated by (1) sufficient technology advancement to support the invention and adoption of the invention (i.e. the invention and its adoption is within the adjacent possible) and (2) sufficient economic surplus so that persons have time for thinking and tinkering.
Every part of this wrench is shown in broken lines except the U-shaped mouth working portion that is for engaging with another part, such as a nut, bold head, or the like. Therefore, the U-shaped part, shown in solid lines, is the only claimed part of the wrench.
I wonder whether the curvy design of the U-shaped part is functional. Design patents are to be directed to ornamental designs. So, if a design patent is directed to a design that is primarily functional, the patent can be invalid.
However, the standard for invalidating a design patent as directed to primarily functional matter is stringent. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). The Federal Circuit Court of Appeals has said that “[w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” It also said, “[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.”
Here, I don’t know whether the curvy design of the U-shaped part imparts a functional benefit, or, if so, whether other designs could also achieve that function. However, it is interesting that the only claimed portion of this wrench is the working mouth portion that is for engaging with another part, such as a nut, bolt head, or the like.
Apple recently was granted US Design Patent D861,014 for an electronic device with graphical user interface. The patent is directed to the user interface for a smart watch. Below is figure 1.
Apple kept the time and date in solid lines claiming them rather than making the time and date in broken lines. Providing the date and time in broken lines would have made those elements unclaimed and would not have limited the claimed design.
However, including the date and time might not be much of a limitation in terms of the actual date and time displayed. First, any competitor device with the same vertical stripe pattern and time in the upper right location would show 10:09 twice a day. The old adage applies that a broken clock is correct twice a day. Further, it is likely that Wednesday will fall on the 23rd of the month every now and then.
Presenting the date and time in solid lines does limit the claimed design here. But maybe not greatly in terms of the actual time of 10:09 or the date of Wednesday the 23rd. Instead, the limitation probably is more in terms of the location and presentation of the date and time.
The original application that resulted in the above patent contained drawings showing the date and time in broken lines as well as solid lines. But, Apple amended the application to focus on the non-broken line version. There is a continuation patent application filed where Apple might be pursing the broken line version, which is shown below. If Apple obtains a patent on the broken line version below, it will have hedged its risk that the solid line version is too limiting.
“[He] requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”
Inventors and businesses are often concerned that their invention or technology will be stolen or copied in the marketplace. However, keeping an invention secret is not always an option. If bringing the invention to market requires disclosing the invention to the public, then secrecy is not an option. But neither, in such case, is keeping it locked up in the lab or under the mattress–if commercial exploitation of the invention is desired.
There are at least two ways to protect yourself when interacting with another about the invention: (1) file a patent application on the invention beforehand, (2) enter into a favorable and strong nondisclosure agreement, or (3) both.
However, there are rarely guarantees. Even with a nondisclosure agreement agreement in place things can still go sideways, as allegedly happened toÂ Mr. Hrabal when he interacted with Goodyear.
Mr. Hrabal’s complaint alleges the following in the case ofÂ Coda Development v. Goodyear Tire & Rubber Company, 2018-1028 (Fed. Cir. 2019). In 2008, Mr. Hrabal invented a self-inflating tire (SIT) technology. General Motors expressed an interest and wanted to involve Goodyear. Goodyear reached out to Coda Development, Mr. Hrabal’s company, requesting a meeting. Before the meeting the parties executed a nondisclosure agreement restricting use of information regarding the SIT Technology.
Then Coda and Goodyear met in 2009 for the first time and requested that Coda share information on the SIT technology. At a second meeting in 2009, Coda allowed Goodyear to examiner a functional prototype of the SIT technology. Also at this second meeting, Mr. Benedict of Goodyear, “requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”
Following the second meeting in 2009, months passed without any communication from Goodyear. Mr. Benedict later in 2009 declined an invitation from Coda to restart communications over a dinner saying that a meeting “would be premature at this point.”
In December 2009, Goodyear applied, without Coda’s knowledge, for a patent titled “Self-Inflating Tire Assembly” naming Mr. Benedict as an inventor, which became U.S. Patent 8,042,586.
Coda assumed that Goodyear lost interest. But in 2012, Coda received an unsolicited email from a then ex-Goodyear employee that said “I am retired now from Goodyear and see in the news today that they have copied the SIT. Unfortunate. I though China companies were bad.”
Between 2012 and 2015 eleven other patents issued to Goodyear covering assemblies and methods for assembly of pumps and other devices used in self-inflating tires, which Coda claims cover confidential information Coda disclosed to Goodyear.
Goodyear denied Coda’s claims and denied that the Coda’s SIT technology was new. This case is only at the initial stage so the court has not made a final determination on these allegations.
What’s the take away here? Does one forego opportunities with other companies even while taking precautions and having a good nondisclosure in place? Probably no.
One should take reasonable steps to protect their interests. But, these allegations illiterate that things could still go badly.Â
Could someone try to steal your invention? It’s possible. But that possibility probably should not stop you from trying to commercialize the invention after taking reasonable steps to protect yourself, particularly if the alternative of indefinite secrecy means that your invention might never get off the ground commercially.