797 F.3d 1341
Fed. Cir.2015Background
- Konig was employed by SRI from 1996–1999 under an employment agreement requiring disclosure and assignment of inventions conceived during employment.
- In mid‑1999 Konig and a friend developed a "Personal Web" idea while Konig was still at SRI; Konig left SRI in August 1999 and later formed Utopy.
- Konig filed patent applications (resulting in the ’040 and later the ’276 patents) that were eventually owned by Personalized User Model, LLP (PUM).
- PUM sued Google for patent infringement in 2009; during discovery PUM produced evidence asserting conception in July 1999 (while Konig was at SRI).
- Google acquired SRI’s rights and counterclaimed for breach of Konig’s SRI employment agreement, asserting Konig failed to assign inventions; the jury found breach but also found the claim tolled under Delaware’s discovery rule and § 8117.
- The district court granted JMOL for PUM/Konig, holding Google failed to prove discovery‑rule tolling or tolling under 10 Del. C. § 8117; the Federal Circuit affirmed in part and dismissed PUM’s cross‑appeal as nonjusticiable.
Issues
| Issue | Plaintiff's Argument (Google/SRI) | Defendant's Argument (PUM/Konig) | Held |
|---|---|---|---|
| Whether the discovery rule tolled the statute of limitations for breach of contract | Injury was "inherently unknowable" and SRI was blamelessly ignorant; competing inferences support jury finding of tolling | Discovery rule requires showing both inherent unknowability and blameless ignorance; Google failed to meet that burden | No — Google failed to prove inherent unknowability or blameless ignorance; discovery rule did not toll limitations |
| Whether Delaware § 8117 tolled the limitations period for Google’s counterclaim | § 8117 tolls where defendant was out of state when cause accrued; statute’s plain text supports tolling here because Konig was not subject to Delaware process earlier | § 8117 shouldn’t be read so broadly to permit stale claims with no Delaware connection; applying it here would erase limitations defenses for non‑residents | No — § 8117 does not toll here; applying it would be inconsistent with Delaware precedent and policy given lack of Delaware connection when claim accrued |
| Whether the district court’s claim construction ("document" = electronic file) should be reviewed | PUM contends the construction improperly imported an "electronic file" limitation and could affect future litigation | Google argues no live controversy remains so there is no Article III jurisdiction to review | Dismissed — no jurisdiction to decide claim construction because no live controversy remains affecting the parties |
Key Cases Cited
- Isaacson, Stolper & Co. v. Artisans’ Sav. Bank, 330 A.2d 130 (Del. 1974) (discovery‑rule application is fact specific)
- Coleman v. PriceWaterhouseCoopers, LLC, 854 A.2d 838 (Del. 2004) (discovery rule requires injury be inherently unknowable and claimant blamelessly ignorant)
- Kaufman v. C.L. McCabe & Sons, Inc., 603 A.2d 831 (Del. 1992) (both elements required to toll statute under discovery rule)
- Layton v. Allen, 246 A.2d 794 (Del. 1968) (blameless ignorance measured by whether reasonable diligence would have revealed claim)
- Saudi Basic Indus. Corp. v. Mobil Yanbu Petrochem. Co., 866 A.2d 1 (Del. 2005) (discussion of § 8117 tolling where plaintiffs were Delaware residents)
- Hurwitch v. Adams, 155 A.2d 591 (Del. 1959) (rejecting an interpretation of § 8117 that would abolish limitation defenses for non‑residents)
- City of Tacoma v. Richardson, 163 F.3d 1337 (Fed. Cir. 1998) (courts may avoid literal statutory readings that produce absurd results)