Friday, August 21, 2009

Sky Technologies v. SAP AG

After the district court found that the plaintiff had standing because it acquired all substantial rights to the patent, the defendant brought an interlocutory appeal. The Federal Circuit affirmed the district court in this opinion, holding that transfers of patent rights other than by assignment do not necessarily have to be in writing.

The plaintiff obtained the patent through a foreclosure proceeding. The court noted that patent ownership is generally determined by state law, but assignment of patents is determined by federal law. However, transfer of patent rights other than by assignment, i.e., by operation of law, is determined by state law. (p. 7-8.) Discussing and relying on Akazawa v. Link New Technology International, Inc., 520 F.3d 1354 (Fed. Cir. 2008), the court confirmed that “transfer of patent ownership by operation of law is permissible without a writing.” (p. 9.) Since this occurred in accordance with the applicable state law, the plaintiff had standing.