Skycam, LLC v. Bennett
900 F. Supp. 2d 1264
N.D. Okla.2012Background
- Skycam, LLC sued Patrick J. Bennett and Actioneam, LLC seeking ownership of US 2009/0207250 A1 and related patent rights.
- Bennett, Skycam’s Chief Engineer from 2004 to January 2006, designed improvements for Skycam's systems, including the 4-point and LX (2-point) systems.
- Bennett was hired without a written invention assignment agreement; Skycam paid him as Chief Engineer while he developed designs.
- The Patent Application was filed February 20, 2009, listing Bennett as an inventor and Actioncam as assignee; Skycam claimed ownership of certain claims Bennett designed at Skycam.
- The court held a nonjury trial on Skycam’s Ninth Claim for Relief concerning ownership of the patent rights.
- The court concluded Bennett’s designs were created while employed at Skycam, but Skycam failed to prove ownership of the overall independent Claim 1 or certain dependent claims as inventions attributable to Skycam.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether an implied-in-fact employed-to-invent contract existed | Skycam contends an implied contract assigned rights to Bennett's inventions | Bennett argues no assignment arose; inventions belonged to him unless contract proved otherwise | Skycam did not prove ownership of the entire independent Claim 1 under employed-to-invent |
| Whether Skycam owns the invention of Claim 1 in its broad form | Claim 1 is a Skycam invention attributable to Bennett’s work at Skycam | Bennett not employed to invent the full scope of Claim 1 | Skycam not entitled to ownership of the invention described in independent Claim 1 |
| Whether Claims 6, 7, 8, 17, 18 (vertical stabilization) were Bennett’s inventions at Skycam | These claims reflect Bennett’s stabilization work at Skycam | These claims were not Bennett’s inventions developed at Skycam | Skycam not entitled to ownership of the vertical stabilization claims |
| Whether Claims 10 (angled sheaves) and 12 (level wind) are Bennett’s inventions | Bennett contributed the angled sheave and level wind innovations at Skycam | Bennett did not invent the claimed angled sheave or level wind under Skycam | Skycam failed to prove these were Bennett’s Skycam inventions |
| Whether any of Bennett’s LX-system tension/ safety-reel work constitutes a patentable invention | LX-system tensioning and safety reel work constitutes an invention | Work was preliminary/test mode and not an invention by Bennett at Skycam | Not an invention owned by Skycam |
Key Cases Cited
- Banks v. Unisys Corp., 228 F.3d 1357 (Fed.Cir.2000) (employed-to-invent principles and implied contracts by deed or implied-in-fact)
- United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933) (employed-to-invent exception rationale for assigning inventions to employer)
- Solomons v. United States, 137 U.S. 342 (1890) (employee cannot appropriate inventions developed under employment)
- Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed.Cir.1996) (implied contract and assignment analysis for employee inventions)
- Houghton v. United States, 23 F.2d 386 (4th Cir.1928) (employed to invent; improvements belong to employer)
- Scott v. Finney, 34 F.3d 1058 (Fed.Cir.1994) (testing/reduction-to-practice considerations in invention evaluation)
- Townsend v. Smith, 36 F.2d 292 (C.C.P.A.1930) (conception and reduction-to-practice definitions in invention)
- Hyatt v. Boone, 146 F.3d 1348 (Fed.Cir.1998) (patent-apps content and reliance on application disclosure)
- Amoco Production Co. v. Lindley, 609 P.2d 733 (Okla. 1980) ( Oklahoma definition of invention for ownership questions)