By Dabney Carr
In the most recent rulings in the long-running suit by Touchcom, Inc.
for malpractice against its Canadian patent firm, Bereskin & Parr
("B&P"), Judge Cacheris recently granted partial summary judgment
(found here) to B&P that Touchcom, Inc. lacked standing and denied Touchcom's motion to reconsider that ruling (found here). Touchcom, Inc. v. Bereskin & Parr, Case No. 1:07CV114, 2011 U.S. Dist. LEXIS 72905 (E.D. Va. July 7, 2011).
The relationship between Touchcom and B&P dates back to 1987,
when Touchcom retained B&P to obtain patents over its gasoline pump
invention in Canada and the U.S. After a 2005 finding that its U.S.
patent was invalid because certain software code was missing from the
specification, Touchcom sued B&P for malpractice.
Judge Cacheris dismissed the case for lack of personal jurisdiction over B&P, but the
Federal Circuit reversed, holding that under Fed .R. Civ. P. 4(k)(2)
the act of filing an application for a U.S. patent at the USPTO was
sufficient to subject a Canadian filing attorney to personal
jurisdiction in a malpractice claim based upon that filing. Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009).
After remand, B&P moved for summary judgment on several grounds, but the Court granted the motion on only one ground - that Touchcom,
Inc. lacked standing on the grounds that it had granted its affiliate,
Touchcom Technologies, Inc. ("TTI"), the sole and exclusive right to
collect proceeds from litigation enforcing patent rights.
On a motion for reconsideration, Judge Cacheris affirmed his decision
that a 2003 Amendment to the licensing agreement between Touchcom and
TTI granted TTI sole rights in the patent, even though the Amendment had
never been signed. Based on deposition testimony of the inventor, the
Court held that the terms of the Assignment had been effected by
Touchcom's and TTI's Boards of Directors, and so was a binding agreement
that deprived Touchcom, Inc. of standing.
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