Gellman Ex Rel. Mayer Michael Lebowitz Trust v. Telular Corp.
449 F. App'x 941
Fed. Cir.2011Background
- Gellman, as trustee of the Lebowitz Trust, sued Telular for infringement of U.S. Patent No. 6,075,451, asserting sole ownership by the Lebowitz Trust.
- The district court dismissed for lack of standing because Seivert’s heirs, a co-inventor, were not joined as parties.
- The ’451 patent lists Lebowitz and Seivert as inventors and, under 35 U.S.C. §§ 116, 262, co-inventors are presumptive joint owners.
- Gellman argued an unsigned employment-related agreement transferred Seivert’s rights to Lebowitz/Cellular Alarm; she also relied on equitable theories to obtain title.
- The unsigned agreement is inconclusive and, even if enforceable, does not expressly present-assign rights at signing, so it could not confer immediate legal title.
- The court concluded present assignments are required for future inventions and rejected the hired-to-invent doctrine as a basis for standing; dismissal was without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Gellman has standing without Seivert’s heirs as parties. | Unsigned agreement and equitable theories transfer rights. | All legal owners must participate; heirs are indispensable. | No standing; district court’s dismissal affirmed. |
| Whether the Unsigned Agreement can confer present ownership or stand as a contractual assignment. | Unsigned Agreement transfers all rights to Lebowitz/Cellular Alarm. | Agreement lacks present-into-rights language and cannot confer immediate ownership. | Insufficient to confer standing. |
| Whether the hired-to-invent doctrine saves Gellman’s standing. | Employee inventions belong to employer under this doctrine. | Doctrine is equitable and cannot create standing here. | Cannot save standing; no basis to proceed. |
Key Cases Cited
- Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923) (all patent owners must be joined for suit)
- Sky Techs. LLC v. SAP AG, 576 F.3d 1374 (Fed. Cir. 2009) (transfers beyond writing терп not all require writing)
- Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832 (Fed. Cir. 2009) (present assignment requirements for future rights)
- Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245 (Fed. Cir. 2000) (essential language for present assignment)
- FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991) (assignment language must convey in the present)