Anderson v. TOL, Inc.
927 F. Supp. 2d 475
M.D. Tenn.2013Background
- Anderson sues TOL for patent infringement, breach of contract, and fraud over HoverDisc licensing and rights.
- Overbreak assigned rights to TOL in 2007 without proper consent or 1% royalty increase, leaving ownership unclear.
- Anderson claims ownership of Patents and possible license to PhoenixArts; license terms and status are disputed.
- Anderson's bankruptcy history and non-disclosure of Patents/assets raise questions about asset ownership and standing.
- The court granted a preliminary injunction against TOL and Overbreak and denied motions to dismiss or transfer without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of Patents and License rights | Anderson owns the Patents; PhoenixArts licensed rights. | Overbreak assigned rights improperly; PhoenixArts ownership unclear. | Anderson owns the Patents; Overbreak/TOL not properly bound to License Agreement. |
| Enforceability of forum selection clause | Anderson not bound; venue clause should apply to PhoenixArts. | TOL should enforce forum clause to California. | TOL cannot enforce the forum clause; venue not appropriate to transfer. |
| Standing to sue for patent infringement | Anderson may enforce Patents despite bankruptcy history. | Rights may belong to bankruptcy estate or PhoenixArts; standing questionable. | Anderson has standing to enforce the Patents at this stage. |
| Likelihood of success on patent infringement | TOL infringed; no valid license; Patents likely valid. | Ownership/validity are contested; infringement defense possible. | Anderson reasonably likely to prevail on patent infringement. |
| Irreparable harm and balance of hardships | Infringement harms value and goodwill irreparably. | Infringer harms self-inflicted; balance may favor infringer. | Irreparable harm proven; balance weighs in favor of injunction. |
Key Cases Cited
- Waymark Corp. v. Porta Sys. Corp., 334 F.3d 1358 (Fed. Cir. 2003) (oral assignments and writing requirements for patent ownership)
- Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090 (Fed. Cir. 1998) (patent ownership and assignment principles)
- Canon Computer Sys., Inc. v. Nur-Kote Int’l, Inc., 134 F.3d 1085 (Fed. Cir. 1998) (presumption of patent validity and burden on invalidity)
- Reebok Int’l, Ltd. v. J. Baker, Inc., 32 F.3d 1552 (Fed. Cir. 1994) (presumption of irreparable harm in certain contexts for injunctions)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (reversal of automatic irreparable harm presumption in injunctions)