IBM, Represented by Goodwin Procter, Wins Rights To Patents on Employee's Invention

This is just so wrong!  She worked there part time developed it on  her own time and patented when she had left IBM.   It was not like she was some over paid executive!


Can an employer claim the right to all inventions devised by its workers, even in their spare time? It sure can, according to a recent ruling by a Manhattan federal judge in a case that involved patents on methods to link electronic files to pictures.

http://www.law360.com/articles/239912/judge-dismisses-ip-suit-after-awarding-ibm-patents


http://agreements.realdealdocs.com/Employee-Retention-Agreement/IBM-SUPPLEMENTAL-EXECUTIVE-RETENTION-PLA-1006044/


http://www.webguild.org/presentations/ibmsocialmedia.pdf


http://www.jpo.go.jp/iken/pdf/shinshoku_keka/dantai_16-1.pdf


http://news.cnet.com/Telecommutings-patently-obvious-gains/2010-1030_3-6150394.html


http://news.cnet.com/Telecommutings-patently-obvious-gains/2010-1030_3-6150394.html

See the story:


A federal judge in New York on Friday tossed a lawsuit by the inventor of a graphical user interface that was developed while she worked at IBM Corp., ruling that Big Blue owned the patents under its employee agreement.

U.S. District Court Judge John G. Koeltl found that IBM's intellectual property agreement with the inventor, Michelle Baker, who worked part-time at a company lab, gives ownership of the patents to IBM instead of to her two companies that were assigned patent rights, Picture Patents LLC and Intellinet Inc.

The decision effectively dismantled Baker's patent infringement suit against nine companies, including the National Basketball Association and clothing retailer Aeropostale Inc., which she claims operated websites that allegedly infringe on her graphical user interface.

"The IP agreement clearly applies to the invention and the corresponding patents," Judge Koeltl wrote in his opinion. "Therefore, IBM owned the patents ... and Baker had no interest to assign to Intellinet or Picture Patents."

Baker was a Columbia University doctoral student when she started part-time work at IBM's T.J. Watson Lab in 1990. She devised the interface in 1991 as a solution to the problem of making computer systems accessible through pictures.

After leaving IBM in 1993, she continued to develop her technology and filed three patent applications between 1994 and 1999, eventually assigning them to Picture Patents.

Baker argued that the invention was not related to her work at IBM, putting it outside of the intellectual property agreement.

"The IP agreement, by its plain terms, applies to all such inventions, even if they do not relate to Baker's actual assigned work," Judge Koeltl ruled.

The judge's decision removes Picture Patents' standing to bring patent infringement claims against the companies named in Baker's suit including Dick's Sporting Goods Inc., Charlotte Russe Inc., GSI Commerce Solutions Inc. and subsidiaries of the NBA and Major League Baseball.

In 2007, Baker filed her first complaint against the companies, which argued that IBM was the true owner of the patents. Her fourth amended complaint added IBM to the suit and sought the court to declare Picture Patents the owner of the patents.

IBM, in response, brought seven counterclaims against Picture Patents and moved for summary judgment on Baker's declaratory judgment claims regarding the ownership of the patents.

An attorney representing Picture Patents was not available for comment Monday.

The patents-in-suit are U.S. Patent Numbers 6,278,455; 5,715,416; and 6,002,401.

Picture Patents is represented by Alston & Bird LLP.
IBM is represented by Goodwin Procter LLP.
Law firms representing the companies accused of patent infringement include Cooley LLP and Morgan Lewis & Bockius LLP.
The case is Picture Patents LLC v. Aeropostale Inc. et al., case number 1:07-cv-05567, in U.S. District Court for the Southern District of New York.