The four purported co-inventors of a pending patent application entered an agreement assigning their rights to their respective companies, Memorylink and Motorola. Two of the purported inventors were employees of Memorylink and two were employees of Motorola. The parties subsequently discovered that the two Motorola employees were not proper co-inventors. Memorylink sued Motorola to have the contract voided for lack of consideration. The court affirmed the district court’s grant of summary judgment that the contract contained consideration, because it explicitly stated that “one dollar, as well as other good and valuable consideration, was received as consideration,” and further actual consideration was obtained, because the purported Motorola co-inventors did transfer whatever ownership rights they did have in the patent by executing the assignment.
Memorylink Corp. v. Motorola Solutions, Inc., Case No. 2014-1186 (December 5, 2014); Opinion by: Lourie, joined by Moore, O’Malley; Appealed From: Northern District of Illinois, Tharp, J. To read the full opinion, click here.
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