{"id":119,"date":"2016-07-18T18:46:59","date_gmt":"2016-07-18T22:46:59","guid":{"rendered":"https:\/\/ipmanagement.harnessip.com\/?p=119"},"modified":"2020-11-05T17:06:23","modified_gmt":"2020-11-05T22:06:23","slug":"wheres-my-dollar","status":"publish","type":"post","link":"https:\/\/ipmanagement.harnessip.com\/?p=119","title":{"rendered":"Where’s My %$^&# Dollar?"},"content":{"rendered":"

The issue of consideration in an assignment is always in the background, but only occasionally comes up.\u00a0 In Memorylink Corp. v. Motorola Solutions, Inc.<\/em>,\u00a0773 F.3d 1266, 113 USPQ2d 1088 (Fed. Cir. 2014). the Federal Circuit had to a resolve over the adequacy of consideration in a patent assignment.\u00a0 Memorylink claimed that its assignment to Motorola was void for lack of consideration, since it was supported by Motofola assignment to Memorylink, which was illusory because Motorola had no rights because its employees were not inventors,<\/p>\n

The Federal Circuit started with the axiom that consideration is a basic requirement of a contract, but nominal consideration will suffice.\u00a0 Courts will not inquire into the adequacy of consideration.\u00a0 The Assignment on its face stated:<\/p>\n

\u00a0[f]or and in consideration of goods and valuable consideration of the sum of One Dollar to us in hand paid, and other good and valuable consideration, the receipt of which is hereby acknowledged . . .<\/p><\/blockquote>\n

The Federal Circuit agreed there was no issue of material fact because the assignment explicitly acknowledges consideration for the assignment.\u00a0 The Federal Circuit said that discounting extrinsic evidence, the four corners of the agreement recited consideration,\u00a0 Memorylink complained that this was merely boilerplate, but the Federal Circuit said that the use of boilerplate language does not make the stated consideration invalid or non-existent.<\/p>\n

Other courts that have faced the issue reached similar conclusion.\u00a0 In Network Protection Sciences, LLC,\u00a0v. Fortinet, Inc<\/em>., 2013 WL 4479336 (N.D. Cal. 2013), the district court, applying Texas law, said that the recital \u201c[f]or good and valuable consideration, the receipt of which is hereby acknowledged\u201d was “conclusive” even if no actual consideration were paid.<\/p>\n

The lesson is that a recitation of consideration and acknowledgement of receipt is likely to be accepted by the Federal Circuit, and should be considered in\u00a0every assignment.<\/strong><\/p>\n","protected":false},"excerpt":{"rendered":"

The issue of consideration in an assignment is always in the background, but only occasionally comes up.\u00a0 In Memorylink Corp. v. Motorola Solutions, Inc.,\u00a0773 F.3d 1266, 113 USPQ2d 1088 (Fed. Cir. 2014). the Federal Circuit had to a resolve over … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[5,8],"tags":[],"class_list":["post-119","post","type-post","status-publish","format-standard","hentry","category-agreements","category-ownership"],"_links":{"self":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/119","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=119"}],"version-history":[{"count":3,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/119\/revisions"}],"predecessor-version":[{"id":474,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/119\/revisions\/474"}],"wp:attachment":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=119"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=119"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=119"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}