The Memorylink decision can be found at Attachment/79bfc4b7-f6c8-4d5b-8941-682487f382ef/14-1186 12-5-14Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Specht The founders of Memorylink planned to collaborate with Motorola on wireless multimedia technology, discussed features to be patented, and along with two Motorola employees, entered into an agreement assigning their patent rights to both Memorylink and Motorola.When parties enter into a collaboration agreement, one of the more important issues to be addressed is the ownership of inventions arising from that collaboration. When it was later determined that only employees of one entity might be inventors, those inventors attempted to invalidate the assignment providing for joint ownership.Whether those rights, the court reasoned, are eventually decided to be nonexistent did not undermine the consideration supporting the agreement.The court pointed to the fact that a party assigning patent rights before the patent application is filed or during prosecution cannot guarantee that a patent will issue or that an issued patent will not be invalidated.
Additionally, the court found that consideration was actually exchanged because Motorola's employees transferred whatever ownership rights they possessed to Memorylink and Motorola by executing the assignment.
This decision illustrates how decisions made at an early stage as to ownership of inventions resulting from collaboration will often be binding, even if the assumptions underlying those decisions later prove incorrect.
While the inventors can try to include contract terms that would allow them to recover their rights and solely own the invention, if an assumption on inventorship turned out to be wrong it would likely be difficult to reach agreement on such terms because inventorship can be a difficult issue to determine and the parties would likely want some certainty as to rights going forward.
though I am not sure how the rehashing part could be mapped on insert/erase, do you know of a way to check whether a rehash will be triggered or not ?
@Muhammad Annaqeeb: This answer admittedly doesn't make it clear, as I took a shortcut, but the intention is to say that resizing is insertion/erasure, as in if a reallocation is required, you may consider that to be the same as erasing then re-inserting all affected elements.
In a recent decision from the Federal Circuit in Memorylink Corp. After a successful demonstration to Motorola, Strandwitz sent a letter to Motorola stating that he "agree[d] that any patents would be jointly owned by Motorola and Memorylink," and that Motorola should "head up the patent investigation." Strandwitz also sent Motorola a technical document drafted by Kniskern. When Memorylink later hired outside counsel to review the inventorship and relationship between the entities, it was advised that Motorola's employees were not proper co-inventors.