Equitable interest in patent claim fails resulting in dismissal and fee award
Huntley, L.L.C. v. Monterey Mushrooms Inc., Civil Action No. 08-377-GMS, September 18, 2009.
Sleet, C. J. Defendant’s motion to dismiss for lack of standing and lack of subject matter jurisdiction is granted. Defendant’s motion for costs is granted in part and denied in part.
The dispute arises over legal fees owed for the filing and prosecution of a patent application for a third party. Following a dispute with the third party, plaintiff filed a notice of equitable claim with the PTO. A prior lawsuit against an alleged infringer of the patent was filed. That complaint was withdrawn after a motion to dismiss was filed. This second lawsuit followed. Defendant claims plaintiff has no standing to sue and that plaintiff is liable for costs from the first action. The court concludes that plaintiff lacks standing because he does not hold legal title to the patent-in-suit, since he is neither the inventor nor a licensee. There is no credible dispute that plaintiff is not an assignee. Further, plaintiff has no equitable interest in the patent since neither the notice of equitable claim nor the engagement letter confers any interest in the patent. As for costs, the court is persuaded that defendant is entitled to some costs incurred in the first action since the second action is based in large part on the same claim against the same defendant, essentially requiring the defendant to defend the same action twice. The defendant is permitted to file an itemized application for attorneys’ fees and costs, and the plaintiff will thereafter be permitted to respond.
