Chief Judge Gregory M. Sleet: Alleged Equitable Interest Insufficient for Purposes of Standing
Chief Judge Sleet recently decided a case where plaintiff, a law firm that had helped to prosecute a patent, tried to claim an equitable interest in the patent after their client’s alleged failure to pay their fees. Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS, at 1 (D. Del. Sept. 18, 2009). The firm then tried to make an infringement claim against a subsequent assignee based on the firm’s supposed equitable interest. Id. at 3-4. Chief Judge Sleet denied both claims, noting that the firm’s engagement letter said nothing about a potential assignment of the patent or any equitable interest in it. Id. at 7. While the firm had filed a "Notice of Equitable Claim" with the PTO, that filing was “inconsequential” standing alone, as it was signed only by the firm. Id. The court also rejected Huntley's claim of a "grantor's lien" in the patent, pointing out the lack of legal support for "this rather novel proposition." Id. at 7-8. With plaintiff having no interest in the patent, Judge Sleet granted defendant's motion to dismiss for lack of standing. Id. at 8.