Federal Circuit To Revisit Scope Of Akazawa

Posted on | November 6, 2008 | No Comments

2008-1606 Sky Tech. v. SAP AG
ED/TX 06-cv-440
Judge David Folsom

Defendant SAP was granted leave by the Federal Circuit (2008-m879) for an interlocutory appeal of Judge David Folsom's order determining that, by operation of Massachusetts state law, a security interest default and foreclosure sale transfers title to a secured patent even in the absence of any assignment in writing pursuant to 35 U.S.C. § 261.  If the Federal Circuit reverses, Sky would apparently lack standing to assert 6,141,653, 6,336,105, and 6,338,050.

The Federal Circuit recently issued Akazawa v. Link New Technology Int'l, 520 F.3d 1354 (Fed. Cir. 2008), generally holding that although assignments of patents need to be in writing, not all transfers are assignment.  Thus, in Akazawa transfer of legal title to heirs by operation of law need not be "in writing" under 35 U.S.C. § 261.

Here, the court ruled that under Massachusetts state law title in the subject patents transfered automatically "by operation of law."  Thus, under Akazawa, that transfer need not be in writing.

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Counsel:

Sky Technology: Susman Godfrey LLP (Houston); Ward & Smith Law Firm (Longview, TX); and Law Offices of George M. Schwab (Mill Valley, CA).

SAP: Day Casebeer Madrid & Batchelder LLP(Cupertino, CA); and Young Pickett & Lee (Texarkana, TX).

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