Take Care in Determining Patent Ownership

Jim Singer at IP Spotlight reminds transfer pricing and M&A pros and to consider whether infringement of a patent will be prosecuted as part of the analysis before determining which entity owns the patent.  In Duhn Oil Inc. v. Cooper Cameron Corp., Duhn’s position as an IP holding company with no operating profits was too difficult a fact set to argue in order to prove lost profits damages.

United States District Court Judge Oliver Wanger wrote in granting defendant’s motion for partial summary judgment, “…Duhn is entitled to lost-profits damages for any alleged infringement of the [patent] only through the date Duhn Oil proves it actually practiced the invention and earned or lost income from these operations.”