I want past court cases in any U.S. state that shows a U.S. company
that is a patent licensee, that has either paid cash up-front and has
not paid any royalties and has "SHELVED" the patented product.

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Request for Question Clarification by pafalafa-ga on 05 Sep 2003 11:31 PDT

Companies sometimes do buy rights to a competing product and have the
competitior simply take the product off the market.  I presume this is
what you mean by "shelving" a product.

However, this ordinarily happens as an agreement between companies,
and doesn't necessarily result in lawsuits.  Are you looking for
particular types of suits?  Are you interesting in "shelving" info
from sources other than lawsuits?  Or would you be content with
pointers to cases that simply mention the practice of shelving, even
if it's not central to the case.

Any additional information you could provide will help us focus our
research efforts.

Thanks.

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Clarification of Question by ride-ga on 05 Sep 2003 13:20 PDT

In past court litigation cases that I am only interested are of the
following:
"Shelving" a patent is also when a company initially endorses a
licenses agreement of a patent from an inventor and may have had
positive or "best effort" intent of future manufacturing and marketing
the product. However, for some unknown reason the company does not
pursue the intended exploitation of the patent, abandons the project
as well as any future royalties or financial gains to the inventor /
licensor. The inventor / licensor's only recourse is to file suit for
either restoration of his proprietary rights and or financial
remuneration.

Hopefully, this will clarify this matter for your research.

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Request for Question Clarification by pafalafa-ga on 05 Sep 2003 17:10 PDT

Hello again ride-ga,

I've had a pretty detailed look at both federal and state case law,
and I'm not turning up cases that are on point re: product "shelving".
 Do you know of any actual cases that have gone forward on this
matter?  If I can identify at least one, I can probably find others as
well.

There are certainly untold numbers of patent and license related
lawsuits, but again, none I could find on the particular matter of
shelving.

Any additional information yu can provide would be helpful here.

Thanks

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Clarification of Question by ride-ga on 06 Sep 2003 09:28 PDT

To be more specific, I will explain what has happened to me, hopefully
you can maybe make more sense of my quest.
 
I sold 65% ownership of a patent to a firm and received a lump sum
cash payment on closing and two years (24 monthly) of payments, all of
which was an advance on future profits and would be deducted from
these profits at the 35% share scenario. After the company recouped
their cash advance to me, I would receive 5% royalty payments for the
life of the patent. I endorsed a three year consultant agreement (only
consulted by telephone) and a lengthy non-compete covenant with the
company. Had the preceding have occurred, there would be no issues
here.

The company copied another system which was public domain
(non-proprietary) and incorporated some of my trade secrets pertaining
to the support system of my invention (also non-proprietary) and began
manufacturing & marketing this copied system. Before the two years had
expired, they informed me that they have chosen to market their
design, would not use my design and would no longer have any financial
obligation to me after expiration of my three year consulting
agreement. They maintain majority ownership of my patent and wish to
hold me to the non-compete, has shelved (abandoned or whatever term
you wish to use) my patented system and has stopped paying me. Thus,
depriving me of my livelihood.

The non-compete is being addressed with an attorney, I'm attempting to
complete some leg work and research regarding the shelving or
abandonment of my patent to incorporate into my litigation.

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Clarification of Question by ride-ga on 07 Sep 2003 15:24 PDT

Hi socal-ga and thank you for you interest:
By your handle, I assume you reside in Southern Cal.
Actually it became two patents, # 5,351,986 & 6,398,243. 
Please don't waste you time with this as I did assign all
 rights, but this is not the issue at this point. I am 
seeking precedent setting cases regarding (my terms may be 
in question) a company that has abandoned, shelved, and has 
stopped marketing  either a licensed or assigned patented product, 
and also has stopped royalty payments to the licensor / inventor.  
Thanks again, ride-ga

I have a very important question.  Did you sell 65% of the patent to
the company or did you sell 100% of the patent for 35% of the profit
from the sale of the patented project or did you give the company a
100% exclusive license to the patent.

There is a big difference and this difference will determine your
actions.  If you sold 65% of the patent, then you are in luck because
you can still license the patent to other companies and receive 100%
of the royalties from these other companies.  Patent rights are not
dividable -- 1% ownership of a patent is the same as 100% ownership.

If you sold an exclusive 100% license to the patent (and you retained
ownership -- assignee), then there should have been a clause about
non-proformance to actively use the patent and your right to cancel
the license.

However, my guess is that the company bought 100% of the patent.  If
they bought the patent and they paid you what they promised -- lump
sum and 3 years of payments -- then they own the patent.

Please post the patent number.  A lot of information -- possibly
helpful information -- can be obtained by looking at the data for this
patent.