Tuesday, May 7, 2013

Patent Obtained During Marriage Is Marital Asset in Florida

James Taylor (I believe no relation to the singer) was awarded U.S. Patent No. 5,806,566 in 1998.  At the same time, he was married to Mary Taylor.   In 2011, the Taylors obtained a final judgment of dissolution of their marriage.  The divorce settlement subjected the Taylors' marital assets to equitable distribution, and specified that a percentage of proceeds from the patents were to be divided 60% to Ms. Taylor with 40% to Mr. Taylor.

A year later, Mr. Taylor sued Taylor Made Plastics, Inc. for patent infringement.  Taylor Made sought dismissal, arguing that Mr. Taylor alone does not own the '566 Patent, and thus did not have standing to sue for its infringement.

While patent disputes are governed by federal law,  state law governs the question of shared ownership here.

Under Florida law, properties acquired during a marriage are presumably marital assets. Fla. Stat. § 61.075(6)(a)(l) (2012). Further, under Florida law "a patent is personal property that may be the subject of equitable distribution when the inventor and his or her spouse dissolve their marriage." Gulbrandsen v. Gulbrandsen, 22 So. 3d 640, 644 (Fla. Dist. Ct. App. 2009). Additionally, the Florida Supreme Court has definitively held that "a final judgment of dissolution settles all such matters as between the spouses ... and acts as a bar to any action thereafter to determine such rights and obligations." Davis v. Dieujuste, 496 So. 2d 806, 809-10 (Fla. 1986). Accordingly, since the Patent was issued to the Plaintiff while he was married to Ms. Taylor, Dkt. 1, the Patent was presumably a marital asset, under Florida law, prior to the issuance of the Divorce Settlement. The Divorce Settlement merely reinforced that presumption by subjecting the Patent to equitable distribution and awarding Ms. Taylor a 60% interest in any proceeds from the Patent.
The Court went on to conclude that the divorce settlement reinforced Ms. Taylor's ownership interest in the patent.  As such, the complaint needed to be dismissed for failure to join the co-owner of the '566 Patent.

Motion to dismiss granted.
Taylor v. Taylor Made Plastics, Inc., Case No. 8:12-cv-746 (M.D. Fla. Apr. 29, 2013) (J. Kovachevich)