Cotman IP Law Group Wins Federal Appeal to Protect Inventor’s Patent Rights Against j2 Cloud Servicing and Advanced Messaging Technologies

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Three-judge panel rules man did not surrender patent rights by working as a contractor for global business cloud services provider

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Cotman IP Law Group PLC achieved a significant win for inventors everywhere after the U.S. Court of Appeals for the Federal Circuit ruled in favor of software developer Gregory James, reviving his action against business cloud services giant, j2 Cloud Services LLC and Advanced Messaging Technologies. A three-judge panel reversed a lower court ruling that James, the inventor of the original fax-to-email conversion technology, surrendered his patent rights his company signed a contract releasing its copyright interests while working as an independent contractor for j2’s predecessor.

James was represented by Cotman IP’s Obi Iloputaife and Dan Cotman.

“This was a classic case of a large company ignoring the intellectual property rights of an individual, in this case, the developer of the original technology that helped make j2 a billion dollar company,” said Cotman, Managing Partner at Cotman IP. “This is an important ruling for inventors because it means their patent rights cannot be taken from them unless they affirmatively transfer those rights. We hope this sends a message to large companies who blatantly steal intellectual property from small businesses and individuals that these claims can and will continue to be won.”

James’ action was originally filed in August of 2016 asserting a claim for correction of inventorship of U.S. Patent 6,208,638, which James alleges erroneously names j2 Founders Jack Rieley and Jaye Muller as the inventors. James’ action also included state-law claims for unjust enrichment, conversion, misappropriation, and unfair competition. In October 2016, j2 and AMT filed a motion requesting the case be dismissed on the grounds that Mr. James had no standing to bring the action. The district court granted the motion, citing a “hired-to-invent” doctrine from a 1933 Supreme Court case.

The Federal Circuit disagreed and ruled that that “hired-to-invent” rule did not apply to James, who was not an employee of the company at the time, and importantly that “the Patent Act provides that patents and patent applications are “assignable in law by an instrument in writing.”

For more information, see James v. j2 Cloud Services LLC et al.

Named as one of the Top Patent Litigation Firms in 2016 by Lex Machina, Cotman is known for its work advocating the rights of inventors and intellectual property owners alike. The firm was founded in 2003 by CEO and Managing Partner Dan Cotman, named by Thomson Reuters to the Super Lawyers list for exhibiting excellence in the practice of law for 4 consecutive years (2012-2015, and again for 2018), an accomplishment that puts Cotman among the elite practitioners in the field of intellectual property law. Cotman works hard to create the American Dream for independent inventors, entrepreneurs, artists and small businesses by protecting the intellectual property they develop.

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Obi Iloputaife
Cotman IP Law Group PLC
+1 626-405-1413 Ext: 1004
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