United States Federal Circuit

In an action alleging infringement of two patents directed to methods of compressing digital audio files, judgment as a matter of law for defendants is affirmed where: 1) two of the claims were invented during a period covered by a joint development agreement between plaintiff and a third party, and were therefore New Work; 2) the New Work made the third-party inventor a co-owner of the patent, and without it as a party plaintiffs lacked standing; and 3) the jury lacked substantial evidence for its finding of infringement.

Appellate Information

• Decided 09/25/2008
• Published 09/25/2008

Judges

• PROST, Circuit Judge., Before LOURIE, BRYSON and PROST, Circuit Judges.

Court

• United States Federal Circuit

Counsel

• For Appellees:
  
• Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for plaintiff/counterclaim defendant-appellant.   Of counsel on the brief were John M. Desmarais, Robert A. Appleby, Paul A. Bondor, and Michael P. Stadnick, Kirkland & Ellis LLP, of New York, NY., John E. Gartman, Fish & Richardson P.C., of San Diego, CA, argued for defendant/counterclaimant-cross appellant.   With him on the brief were John W. Thornburgh, Matthew C. Bernstein, and Justin M. Barnes, and John A. Dragseth, of Minneapolis, MN. Of counsel on the brief was Stephen P. McGrath, Microsoft Corporation, of Redmond, WA.