812 F.3d 1050
Fed. Cir.2016Background
- AngioScore owns three patents for the AngioSculpt angioplasty balloon catheter; Drs. Konstantino, Feld, and Tzori are named inventors; Dr. Chaim Lotan is not.
- TriReme, a competitor, acquired from Lotan an exclusive license to any rights he held in those patents and sued under 35 U.S.C. § 256 to correct inventorship, seeking to add Lotan as an inventor.
- AngioScore moved to dismiss for lack of subject-matter jurisdiction, arguing Lotan had previously assigned any rights to AngioScore under a May 1, 2003 Consulting Agreement, so TriReme (as Lotan’s successor) lacked standing.
- The Consulting Agreement’s § 9(a) required listing prior inventions in Exhibit C and granted a nonexclusive license if a prior invention was incorporated; § 9(b) assigned inventions conceived or reduced to practice during the agreement term.
- Lotan did a pig-study before May 1, 2003 that identified a retention problem and recommended affixing the spiral’s free end—a recommendation later reflected in the patents; Lotan did clinical-trial and advisory work after May 1, 2003.
- The district court dismissed, reading § 9(a) and § 9(b) together to conclude Lotan had assigned his rights; the Federal Circuit reversed in part and remanded to resolve factual questions about § 9(b).
Issues
| Issue | Plaintiff's Argument (TriReme/Lotan) | Defendant's Argument (AngioScore) | Held |
|---|---|---|---|
| Whether § 9(a) of Consulting Agreement assigned Lotan’s pre-5/1/2003 inventive rights | § 9(a) did not assign rights; at most it required disclosure and grants a nonexclusive license if a prior invention is incorporated | Failure to list prior invention amounted to representation and assignment of rights to AngioScore | § 9(a) does not effect an assignment; it grants at most a nonexclusive license; district court erred to rely on § 9(a) for assignment |
| Whether TriReme is estopped by Lotan’s § 9(a) representation from asserting inventorship | Lotan/TriReme: estoppel by contract inapplicable because plaintiffs do not seek to enforce the contract | AngioScore: estoppel by contract (Cal. Evid. Code § 622) binds Lotan’s successor from contradicting the written representation | Estoppel by contract does not apply where the claim is not founded on enforcement of the written instrument; TriReme not bound |
| Whether § 9(b) assigned Lotan’s inventive rights based on post-5/1/2003 work | Lotan/TriReme: Lotan’s post-effective-date work was mainly clinical and advisory, not conception or reduction to practice of the invention | AngioScore: Lotan’s continued post-effective-date work ‘‘developed’’ or ‘‘reduced to practice’’ the invention, so § 9(b) assigned his rights | Undecided — assignment under § 9(b) is a fact question; remanded for the district court to determine whether Lotan’s post-5/1/2003 work falls within § 9(b) |
| Whether dismissal for lack of subject-matter jurisdiction was appropriate | TriReme: lacked standing only if Lotan had assigned rights; disputed factual assignment under § 9(b) precludes dismissal | AngioScore: Lotan had assigned all relevant rights; TriReme has no concrete financial interest and thus no standing | Dismissal premature: court reversed and remanded because factual issues about § 9(b) assignment preclude resolution on motion to dismiss |
Key Cases Cited
- Chou v. Univ. of Chicago, 254 F.3d 1347 (Fed. Cir. 2001) (standing in inventorship disputes requires a concrete financial interest)
- Larson v. Correct Craft, Inc., 569 F.3d 1319 (Fed. Cir. 2009) (assignment of all rights defeats standing to seek correction of inventorship)
- Shum v. Intel Corp., 629 F.3d 1360 (Fed. Cir. 2010) (ownership interests affect entitlement to practice patents and defenses to infringement)
- Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566 (Fed. Cir. 1993) (contract interpretation reviewed de novo)
- Cedars-Sinai Med. Ctr. v. Shewry, 137 Cal. App. 4th 964 (Cal. Ct. App. 2006) (apply plain meaning to interpret California contracts)