Technologies Properties Ltd.

Townsend client Technology Properties Ltd. was the assignee of patents issued to two inventors, Charles Moore and Russell Fish, who in 1989 had collaborated to develop high-speed microprocessors. Mr. Moore assigned his rights to TPL and Mr. Fish assigned his rights to Patriot Scientific.

When Patriot filed a patent infringement suit against five Japanese computer companies in Oakland, California, in 2004, they quickly realized that TPL was not only a necessary party to the litigation, TPL could also license the patents to the companies that Patriot was suing. In addition, Intel Corporation filed an action for declaratory relief in U.S. District Court in the Northern District of California, in San Jose.

Patriot’s strategy was to challenge Mr. Moore’s status as a joint inventor, launching two lawsuits against TPL, Charles Moore and TPL’s sole shareholder, Dan Leckrone. First, Patriot joined TPL, Moore and Leckrone as defendants in the Oakland infringement action, asking the court to declare that Fish was sole inventor of the patent in suit (the ‘336 patent). Next, Patriot filed a declaratory judgment action seeking a declaration that Fish was sole inventor of the ‘336 patent, as well as three of the seven patents in the Moore-Fish portfolio, and that Patriot was sole owner of those four patents.

Judge Saundra Armstrong immediately stayed all Oakland litigation pending the outcome of the San Jose inventorship/ownership litigation.

Subsequently, Townsend assisted TPL in negotiating a license agreement with Intel Corp. and also succeeded in disqualifying Patriots attorneys, who were resisting settlement. These developments led to a negotiated settlement with Patriot, whereby Patriot acknowledged Moore’s and TPL’s inventorship and ownership, and delegated responsibility for licensing and enforcement of the patent portfolio to TPL.

Townsend’s work in the TPL case exemplifies the ability of our lawyers to manage multiple venues and the interests of multiple parties in a complex dispute, pursuing not only legal, but also procedural tactics to the advantage of our clients.

Roger Cook, Iris Mitrakos, Rob McFarlane, Lennie Augustine and Alexandra Sepulveda.

http://www.townsend.com/files/litreview2006.pdf