Schultz v. iGPS Co., No. 10 C 71, Slip Op. (N.D. Ill. Aug. 16, 2011) (Hibbler, Sen. J.).
Judge Hibbler denied defendants’ motion to dismiss plaintiff’s patent infringement complaint for lack of standing. Defendants argued that plaintiffs did not hold enforceable title to the patents in suit. The patents in suit were intentionally abandoned by plaintiff’s co-owner, CHEP. When plaintiff learned of the abandonment, he asked the Patent Office to revive the patents, explaining that his failure to pay the maintenance fee was inadvertent. The only way plaintiff could truthfully claim inadvertence was if he referred only to himself and not CHEP, which intentionally abandoned. As such plaintiff was estopped from arguing that he also revived CHEP’s rights. Defendants argued that plaintiff had a fiduciary duty to assign his rights to his then employer, VTEC. But because VTEC never required plaintiff to assign his rights, the Court held that plaintiff had retained the remaining rights in the patents in suit based upon the facts alleged in the complaint. Plaintiff, therefore, had standing to sue.