New NPE Defense = Terminal Disclaimers?

Wilson Sonsini has issued a Client Alert reporting a most interesting decision from District of Nevada decision in Email Link Corp. v. Treasure Island, LLC et. al holding “…that a patent subject to a terminal disclaimer was unenforceable against the alleged infringers because it was not commonly owned with the related prior patent, even though both patents were owned by subsidiaries that were wholly owned by the same parent company.”

The Alert concludes:

“This holding clarifies that two subsidiaries wholly owned by the same parent do not count as “commonly owned” for terminal disclaimer purposes. The decision underscores the importance of looking to the assignment history of the asserted patents and the relationships among the assignees in a patent family that are subject to terminal disclaimers when preparing a patent litigation defense.”

Note that the entities involved are Acacia and two of its subsidiaries. With the proliferation of NPE’s and their subsidiaries, and the  confusing transfer of ownership rights among them, this decision could raise a new defense against such mass patent aggregators.

Expect this decision to be appealed to the Supremes.

Here is a link to the WSGR Client Alert with more information and background: http://www.wsgr.com/wsgr/Display.aspx?SectionName=publications/PDFSearch/wsgralert-terminal-disclaimers.htm

BTW, who sues a casino? Wouldn’t one worry that a bloody horse’s head is going to end up in your bed? Just saying…………..

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Filed under Mass Aggregators, NPE Court Decisions, Patent Litigation, Patent Troll

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