The Harris County Texas appellate courtroom not too long ago affirmed abstract judgment favoring the Hunton Andrews Kurth legislation agency and its attorneys. Taylor v. Hunton Andrews Kurth, LLP, 14-22-00410-CV (Tex. App.–Hous. [14th Dist.] July 13, 2023). Taylor and his firms WPEM and W2W had sued the agency for authorized malpractice after first shedding its infringement lawsuit and being caught with the defendants lawyer charges. The case affords just a few key takeaways for entrepreneurs delving into the patent system.
Background: William Taylor and his enterprise associate developed a software program utility referred to as SafeCell and assigned the patent rights to their startup firm W2W. They employed Hunton AK to deal with the patent utility course of. Hunton filed provisional and non-provisional patent functions on behalf of W2W. A number of years later, after a patent was granted (and their authorized invoice nonetheless unpaid), Taylor and his associate transferred patent rights again to themselves as people and terminated W2W. They then shaped a brand new firm referred to as WPEM and assigned the patent to WPEM so it may sue one other firm for infringement. That lawsuit failed with a whole reversal — WPEM was ordered to pay $180,000 in attorneys’ charges to the defendant.
Taylor, his associate, WPEM, and W2W then sued Hunton for authorized malpractice, alleging negligence within the dealing with of the unique patent utility. The trial courtroom dismissed all claims besides Taylor’s particular person claims in opposition to one Hunton lawyer, which have been later severed and dismissed in a separate order. The appellate courtroom affirmed, holding (1) Taylor was not the agency’s shopper, and neither was WPEM; (2) though W2W as a shopper its had been terminated in 2017 — greater than 3 years earlier than hand. That was an issue as a result of Texas has a 3-year limitation on actions following dissolution of an organization.
Key Takeaways for Inventors and Startups
1. Watch out when assigning IP rights from people to companies, and again once more.
The engagement letter was between W2W and Hunton, not with Taylor or his associate as people. And, Hunton had the people signal a selected assertion that they weren’t the purchasers. The courtroom discovered this disclaimer made clear Hunton solely represented W2W. The switch of the patent from W2W to the people didn’t switch W2W’s attorney-client relationship.
Key quote: “The project of a patent doesn’t switch an attorney-client relationship.” (quoting Telectronics Proprietary, Ltd. v. Medtronic, Inc., 836 F.2nd 1332 (Fed. Cir. 1988)).
2. Perceive the results of terminating a enterprise entity.
W2W lacked standing to sue as a result of it had been terminated as an entity outdoors the 3-year winding up interval permitted below Texas legislation. Its claims have been extinguished.
Key quote: “As soon as dissolved, the company may neither sue nor be sued, and all authorized proceedings by which it was a celebration abated.” (quoting Hunter v. FW, 620 S.W.2nd 547 (Tex. 1981)).
3. Particular person shareholders typically can’t sue for harms to the corporate.
The courtroom utilized the company damage rule, which bars house owners from recovering personally for accidents to the corporate. Taylor owned no particular person losses as a result of he didn’t personal the patent rights at any related time.
Key quote: “Below the company damage rule, an proprietor of an organization can not sue to get well damages personally for a improper executed to the corporate. ”
The result here’s a traditional company protection technique — the protection used the advanced company construction and possession modifications to finally defeated of the claims. For inventors and startups searching for to guard IP, it is sensible to additionally seek the advice of with a company lawyer alongside the best way to make sure constant safety.
I’ll observe right here that though Hunton Andrews Kurth received on technicalities, in addition they denied the substance of the claims.