October 28, 2006
Is Everex Dead?
First published December 22, 2004
Its been a while since I have posted anything. Sorry about that. Turns out the Westlaw searches I set up to monitor the subject all died a couple of months ago. But I am getting back on track now.
Pretty much everyone who might read this blog knows about the Everex case. Its a 9th Circuit decision that limits a debtor's ability to assign an interest in a patent license due to Federal common law restricting patent license assignability.
Superbrace, Inc. v. Tidwell, 21 Cal. Reporter 3d 404 (Nov. 23, 2004) might just change all that. Relying on a 1957 California Supreme Court decision, the Superbrace decision states that under California state law, patent licenses are assignable, and it's this state law, not the Federal law doctrine espoused by Everex, that controls patent license assignment. The Superbrace decision analyzes Everex at great length and, in the end, disagrees with its results.
Could we have a regime where California state courts hold that patent licenses are assignable under state law and the Federal courts hold they are non-assignable under Federal law? How do you possibly resolve the conflict without taking the matter to the Supreme Court? I don't have the answers. ¶ 3:42 PM
Its been a while since I have posted anything. Sorry about that. Turns out the Westlaw searches I set up to monitor the subject all died a couple of months ago. But I am getting back on track now.
Pretty much everyone who might read this blog knows about the Everex case. Its a 9th Circuit decision that limits a debtor's ability to assign an interest in a patent license due to Federal common law restricting patent license assignability.
Superbrace, Inc. v. Tidwell, 21 Cal. Reporter 3d 404 (Nov. 23, 2004) might just change all that. Relying on a 1957 California Supreme Court decision, the Superbrace decision states that under California state law, patent licenses are assignable, and it's this state law, not the Federal law doctrine espoused by Everex, that controls patent license assignment. The Superbrace decision analyzes Everex at great length and, in the end, disagrees with its results.
Could we have a regime where California state courts hold that patent licenses are assignable under state law and the Federal courts hold they are non-assignable under Federal law? How do you possibly resolve the conflict without taking the matter to the Supreme Court? I don't have the answers. ¶ 3:42 PM
