China: 奥斯卡金像奖特效技术之专利争夺战

Last Updated: 1 October 2015
Article by Michael W. Vella

最近,一家深圳企业在美国提起的诉讼为准备获取国外知识产权的中国公司上了重要一课。此案涉及深圳市海铁城科技有限公司(下称"SHST")与一家美国公司之间的争议,SHST诉称其购买了获奥斯卡奖项的特效技术的专利权,争议的另一方是最初拥有该技术的美国公司,且其诉称专利权是由"变节员工"违规转让给SHST的。

争议的焦点在于一项名为"MOVA"的专利技术,MOVA技术可以用来捕捉演员的面部表情并且在电影中制作特效,例如最近的卖座大片《银河护卫队》就使用了这项技术。奥斯卡评审委员会于今年一月份宣布MOVA技术获得2014年科技奖("SciTech")。

今年二月,SHST在美国三藩联邦地区法院发起了一场诉讼,把Rearden LLC(硅谷的一家高科技产业孵化器)的相关公司(下称"Rearden")列为被告。SHST的诉状称, Rearden旗下的一家公司原本拥有MOVA专利权,但是在该技术的商业化上并不成功,因此将该专利权作为债权人受益转让协议的一部分转让给了第三方。此后MOVA专利权在Rearden知晓并且鼓励的情况下被转让给了由Rearden的一名前员工Greg LaSalle所开办的公司,最后Greg LaSalle将MOVA专利权转让给了SHST。

根据SHST的诉状,Rearden在奥斯卡金像奖之后产生了严重的"卖家悔恨"。Rearden的创始人Steve Pearlman致信奥斯卡评审委员会,声称他才应该获得该奖,而不是LaSalle;同时,他还声称,所有MOVA专利仍然属于Rearden旗下的一家公司。诉状称,Rearden向美国专利局提交了虚假的转让证明,试图让人以为MOVA专利权被转回了其控制的公司。

根据以上诉称,SHST要求加州联邦法院判决Rearden对SHST进行赔偿,并宣布SHST才是MOVA专利权的所有人,而不是Rearden。

2015年4月,Rearden提交了针对SHST诉状的答辩状,并向SHST提起反诉。Rearden声称,SHST并没有获得MOVA专利权,因为其交易对象是"从未拥有MOVA产权,并且没有权利和能力转让该专利权的Rearden变节员工(LaSalle)"。反诉状宣称,LaSalle在向SHST转让专利权时仍然是Rearden的员工,且其与Rearden的劳动合同要求他将其在受Rearden雇佣期间取得的所有权利转让给Rearden。

SHST的诉讼还处于初始阶段,所披露的信息还很少。不过,这场诉讼对于试图收购海外知识产权的中国公司有很好的警示作用。

首先,投资国外知识产权的中国公司必须做好尽职调查,以确保他们拥有相关知识产权的所有权。其次,知识产权所有者需要时刻警惕,防止知识产权受到侵占。再次,知识产权的价值在于排他性。如果一个公司没有准备好强势地保护其知识产权的排他权,这些权利将会很快一文不值。

SHST的行动清楚地表明他们已经充分认识到采取果断行动以保护其MOVA权利所有权的必要性。暂时不清楚的是,SHST是否在收购MOVA权利时做了足够仔细的尽职调查来发现Rearden在该所有权上的竞争关系。随着诉讼的展开,我们将了解SHST到底是被侵权的受害者,还是当初收购MOVA权利就存在缺陷

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