7 F.4th 1148
Fed. Cir.2021Background
- Dr. Mohammed Islam, a tenured University of Michigan (UM) professor, agreed as a condition of employment to abide by UM Bylaw 3.10 and the university Technology Transfer Policy addressing ownership of inventions.
- In 2012 Islam took an unpaid leave to start a company and filed provisional patent applications; he later filed non‑provisionals claiming priority to those provisionals and assigned the issued patents to Omni MedSci in December 2013.
- UM’s Office of Technology Transfer (OTT) asserted UM ownership, citing medical‑school support and use of University resources; Islam did not pursue the formal UM appeals process.
- Omni sued Apple for patent infringement; Apple moved to dismiss for lack of standing, arguing bylaw 3.10 automatically and presently assigned title to UM, so Islam had no rights to transfer to Omni.
- The district court held paragraph 1 of bylaw 3.10 was, at most, a promise to assign (not a present automatic assignment) and denied dismissal; the Federal Circuit (Majority: Linn J.; Dissent: Newman J.) affirmed the denial, holding UM bylaws did not effectuate a present automatic assignment.
Issues
| Issue | Plaintiff's Argument (Omni/Islam) | Defendant's Argument (Apple/UM) | Held |
|---|---|---|---|
| Whether UM Bylaw 3.10 ¶1 automatically and presently assigned future patent rights to UM | Bylaw 3.10 is at most a future promise; it does not strip Islam of present title to assign to Omni | The phrase “shall be the property of the University” creates an automatic present assignment of future inventions to UM | Bylaw 3.10 ¶1 does not effect a present automatic assignment; it is reasonably read as a future promise/condition to assign |
| Whether similarity of ¶1 wording to other paragraphs and internal policy language means automatic transfer | The bylaw and Tech Transfer Policy do not show an automatic transfer mechanism; the Invention Report (separate present‑assignment form) demonstrates UM uses a distinct present assignment instrument | The University’s long‑standing practice and Tech Transfer Policy show intent to vest ownership in UM upon invention | Court: identical “shall be” language in other paragraphs (¶4, ¶5) supports non‑automatic reading; the Invention Report contains distinct present‑assignment language, undermining claim ¶1 itself effectuates transfer |
| Whether parties’ course of conduct (past reassignment/waivers, OTT statements) establishes that ¶1 operated as an automatic assignment | Past UM conduct (waivers, releases) and Islam’s 2007 reassignment acknowledgement are ambiguous and do not prove ¶1 operated automatically | UM and Apple point to longstanding implementation and admissions indicating automatic vesting | Court: parties’ conduct was equivocal and insufficient to override textual interpretation; conduct does not change the bylaw’s natural reading |
Key Cases Cited
- DDB Techs., LLC v. MLB Adv. Media, L.P., 517 F.3d 1284 (Fed. Cir. 2008) (federal‑circuit de novo contract interpretation and test for present vs. future assignment)
- Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574 (Fed. Cir. 1991) ("shall be the property of" construed as an agreement to assign, not a present assignment)
- FilmTec Corp. v. Allied‑Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991) (present‑tense language "does hereby grant" held to effect present automatic assignment)
- FilmTec Corp. v. Hydranautics, 982 F.2d 1546 (Fed. Cir. 1992) (statutory/present vesting language construed to vest title in government)
- SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010) (present‑tense "Employee assigns" language held to effect present assignment)
- Regents of Univ. of New Mexico v. Knight, 321 F.3d 1111 (Fed. Cir. 2003) (employment assignments and inventor cooperation can effectuate university ownership)
- Roche v. Board of Regents of the Univ. of Cal., 563 U.S. 776 (2011) (statutory regimes can unambiguously vest title in the government; limited relevance to private employment agreements)