Home » Patent » Terminal Disclaimer

Category Archives: Terminal Disclaimer

Unified Messaging Solutions Ordered to Add Acacia or Case Will be Dismissed, Evades Sanctions

In re Unified Messaging Solutions Patent Litigation, Case No. 12-6286 (N.D. Ill. Sept. 25, 2013)(Judge Lefkow)

Unified Messaging Solutions (“UMS”), which is a patent holding company setup by Acacia, has sued numerous defendants in multiple suits.  Those suits were consolidated in the Northern District of Illinois following a determination by the Judicial Panel on Multidistrict Litigation.  Several of the defendants moved for sanctions, for dismissal pursuant to Rule 11, and for dismissal pursuant to rule 12(c).  All of the motions were based on violation of a common terminal disclaimer of several of UMS’s asserted patents.  In particular, several of the asserted patents are related to U.S. Pat. No. 6,350,066.

UMS does not own the ‘066 patent – rather, the ‘066 patent is owned by a separate Acacia entity.  However, several of the patents asserted by UMS were issued only based on the following terminal disclaimer:

The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patents and any patent granted on said pending reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

As UMS does not own the ‘066 patent, the Court ordered that the entity that owns the ‘066 patent be added to the case, or it will be dismissed.  However, the Court did not grant sanctions against UMS as it determined that “the facts do not indicate that AMT and UMS impermissibly divided ownership of the patents violating the terminal diclaimers […]”