*1 INC., OF ABBOTT POINT CARE
Plaintiff-Appellant, INC., Defendant-Appellee.
EPOCAL,
No. 2011-1024. Appeals, States Court of
Federal Circuit. 13, 2012.
Jan. 29, 2012.
Rehearing Denied Feb. *2 standing,
Because Abbott lacks this court affirms.
I. complaint filed a against Epoeal Abbott alleg- the Northern of District Alabama ing infringement of U.S. Patent Nos. ('327 6,845,327 patent) entitled “PoinWOf- Analysis Care In-Vitro System” Blood and ('778 6,896,778 patent) entitled “Electrode patents Mode.” These systems cover and for testing samples. devices blood Abbott Epoeal competitors diagnos- and are in the Jersey corpora- tic field. Abbot a New tion that a variety manufactures and sells of products, including point-of- healthcare systems care profes- that enable medical quickly sionals to test blood without send- sample away Epoeal to a lab. is a by corporation Canadian founded Dr. Im- Lauks, ants the named inventor of the Likewise, patents-in-suit. Epoeal manu- factures and sells point-of-care blood test- ing systems. parties Both claim to own Castanias, Gregory A. Day, Jones of and '772 patents. patents '328 Both DC, argued Washington, for plaintiff-ap- Epoeal assignee. name as the Abbott pellant. him on With the brief were Jason ownership claims basis of contracts Murashko, G. Winchester and Dennis predecessors. between Lauks and Abbott’s Chicago, IL. Lauks entered into three contracts: two Downs, Procter, employment Anthony J. Goodwin one consult- LLP, Boston, MA, ing agreement. argued for defen- dant-appellee. him With on the brief were Epoeal, Before founding Lauks was an Daryl L. Wiesen Safraz W. Ishamael. employee predecessors, of Abbott’s Inte- grated Incorporated Ionics (“Integrated RADER, Judge, LOURIE, Before Chief Ionics”) (“i- Corporation i-STAT BRYSON, Judges. Circuit STAT”). employment Lauks executed an Integrated with Ionics on Janu- Opinion by for filed Chief (“1984 ary Agreement”), which Judge opinion RADER. Dissenting filed confidentiality, included non-competition, Judge Circuit BRYSON. non-solicitation, assignment disclosure and RADER, Judge. Chief provisions. In part, agree- relevant provided that:
The United States District Court for the Northern granted District Alabama I Ep- agree promptly [Lauks] communi- oeal, (“Epoeal”) Ionics, Inc.’s Integrated Motion Dismiss cate to to assign Integrated dismissed Abbott Point of Care Inc.’s designee Ionics or its all (“Abbott”) Complaint prejudice. in, inventions, my rights im- discoveries, The 1999 whether J.A. 70. provements not, currently assignments which I patentable does not address invention may I make or which possess own or obligations. *3 during my employment or conceive 2001, 8, 4 and Lauks filed On June June relate to Ionics which Integrated '772 that led the '328 and applications to activities of prospective present in- patents, identifying as the sole himself Ionics; hereby assign and I Integrated 2003, In Lauks as- ventor. December and
to Ionics authorize Integrated and patents-in-suit Epocal. to Ab- signed the authorities, request patent competent acquired bott i-STAT in 2004. foreign, to and rec- and honor domestic 25, August filed its On Abbott ognize document as a full and com- this asserting infringement and le- Complaint plete assignment thereof. gal Citing patents. title to the contested (“Disclosure Assignment J.A. 231-32 Agreement, alleged Lauks the 1984 Abbott Covenant”). Integrated Ionics subse- assign to disclose his inven- agreed i-STAT. Lauks executed quently became tions, improvements, discoveries to its employment an with i-STAT predecessor, Integrated Ionics. Abbott (“1992 29, January Agreement”). Consulting also referenced the 1999 The included Lauks’ em- Agreement alleging recog- Agreement, expressly benefits, duties, compensation, ployment that the 1984 Agreement nized remained termination, severance payments. for the Lauks’ con- effect duration of resigned Septem- from i-STAT on Lauks provision sulting period, specifically the time, an 1, signed At that he ber 1999. inventions, all Lauks’ assigning rights consulting agreement with eighteen-month Com- improvements, discoveries. The (“1999 Consulting Agreement”), i-STAT alleged con- plaint further that Lauks 1, which on March 2001. The expired inventions ceived contested before that Dr. Consulting Agreement notes 2001, 1, thus Abbott owner- giving March i- from all at “resigns positions” Lauks his ship rights. Agreement then defines STAT. The consulting Lauks’ exclusive services for Epocal filed a to dismiss lack motion specifies that “[t]he subject jurisdiction matter and failure to products, to work on not extend new Epocal’s a claim. In its to opposition state not based on core
whether or [i-STAT’s] dismiss, limit- requested to motion Abbott point- whether for technology and or not jurisdictional discovery if the district ed Id. analysis applications.” of-care blood evidence court determined extrinsic was gave The i-STAT and Lauks necessary Agreement. to construe the 1999 schedule, “recog- particularly flexible work a motion for an addition, In Abbott filed other, pursue to non- nizing Lauks’ desire camera review privi- of a “clawed back” Id. The confiden- conflicting interests.” letter, leged which related to tiality existing agree- noted provision “the compel and a discov- Agreement, motion regard- Lauks and [i-STAT] between privi- ery and determine the status ing confidentiality, non-solicitation response, Epocal In filed a leged letter. (the ‘Existing Confiden- non-competition privilege stay or strike Abbott’s motion tiality place shall remain Agreement’) motions. [i-STAT], employed by if remained Lauks During arguments, the district oral non- except regarding the covenants motion for granted court competition run 18 months after shall camera review. court issued Consulting Agreement.” district execution of opinion and order that This court also reviews contract a memorandum Epocal’s interpretations motion dismiss. The without deference. granted See Holding Abbott standing Spring found lacked Creek Co. Shinnihon district court Co., 158, N.J.Super. U.S.A. 943 A.2d because Agreement’s (N.J.Super.Ct.App.Div.2008). Dis- Fi did continue not nally, this “the Assignment Covenant. There- reviews district closure and fore, discovery, did not own the court’s denial of an issue patents-in- Abbott law, unique patent district court as moot for suit. The declined abuse discre *4 tion, compel discovery regional motion to the law of applying Abbott’s the cir cuit,” of the the letter. here determine status 2000 the States Court of Appeals court also declined to for Eleventh The trial entertain the Circuit. Patent stay Rights or Epocal’s Group, Gaming motion to strike Abbott’s Prot. LLC v. Video (Fed.Cir. Techs., Inc., 1364, motions. The district en- F.3d 1371 privilege 603 7, judgment September final on tered 2010). appealed, 2010. Abbott this court has Abbott has the to burden show nec 1295(a)(1).
jurisdiction
§
under 28 U.S.C.
essary ownership rights
support
to
stand
Fieldturf,
to sue. See
Inc. v. South
II.
Indus., Inc.,
west Recreational
357 F.3d
standing
This court reviews
to
1266,
(Fed.Cir.2004).
1269
Abbot asserts
infringement
sue
defer
patent
for
Agreement,
as carried for
Co.,
Corp. Kelley
ence.
See Rite-Hite
by
Agreement,
ward
the 1999 Consulting
(Fed.Cir.1995)
1538,
(en
56
1551
F.3d
gave
ownership
it
of the '328 and '772
banc). Only patentee may
a
an ac
bring
patents.
patent
infringement.
tion for
See 35
(“A
§
patentee
U.S.C. 281
shall have rem
governs
State law
contract inter
edy
action
by
infringement
civil
for
of his
Labs.,
pretation. See Metabolite
Inc. v.
patent.”). Title
“patentee”
35 defines
as Lab. Corp.
Am.
370
Holdings,
F.3d
of
the
party
patent
whom the
issued or
(Fed.Cir.2004).
1354,
Thus,
1369
the law
any
patent.
successors
title
the
See of the state of New Jersey governs these
100(d).
title,
§
35
oth
U.S.C.
Transfers of
Agreements.
contract,
a
In interpreting
it
assignments,
erwise known as
con
are
is
...
“well-settled
when the terms of
§
35
by
trolled
U.S.C. 261:
clear,
a contract are
‘it is the function of a
Applications
patent, patents,
for
or
court to
enforce
as written and not to
therein,
assignable
interest
shall be
a
make
better contract for either of the
by
law
an
in writing.
instrument
The
parties.’” CSFB
Princeton
2001-CP-4
applicant, patentee,
assigns
or his
or
Ctr.,
I,
Corporate
Park
SB
LLC v.
Rental
legal representatives may in
manner
like
LLC,
N.J.Super. 114,
1,
410
A.2d
4
grant
convey
right
un-
exclusive
(N.J.Super.Ct.App.Div.2009)
(quoting
application
patent,
pat-
der his
for
Co.,
Kampf
Ins.,
v. Franklin
33 N.J.
Life
ents,
any specified part
whole or
36,
(1960));
1305 agreement “concerning employee con- the Employment Agreement the 1992 though fidentiality noncompetition,” while the Epo- “assignment,” the word not use assign- agree- refers to the 1984 agreement that Dr. Lauks’s 1999 acknowledges cal agreement agreement “regarding confi- from the 1984 ment as the obligations ment agreement non-compe- be- dentiality, into the 1992 non-solicitation carried over all incorporated quite plain that both agreement Again, the 1992 tition.” cause Dr. Lauks obligations imposed agreement. are to the Ac- of the references 1984 agreement. quoted language 1984 if in the cordingly, agree- agreement refers to 1984 i- Dr. Lauks and Agreement, In concedes—the Epocal ment as a whole—as referring practice their continued STAT quoted language from the 1999 similar with a agreement to the untitled to have the same agreement appear would title; to it they in 1999 referred shorthand meaning. Confidentiality Agree- “Existing as Moreover, agree- ment.” arguing contrary, Epocal In to the ment, made reference that the places great weight on the fact listing each to the 1984 document agreement permitted Dr. Lauks to be agreement. found of the covenants “any for breach of of the cove- terminated described Employment Agree- in the 1992 nants” ... existing agreement “the agreement as agreement. in the The 1999 ment or non-solicitation, confidentiality, regarding however, substantially sim- agreement, has non-competition.” that Dr. Lauks could language, stating ilar “of material be terminated for breach agree- Epocal’s position is (in- covenant ment, agreement, carried unlike the Existing Confidentiality Agree- cluding the only three listed covenants forward ...).” Moreover, light par- non-solicitation, and non- (confidentiality, practice referring ties’ the rest of the cove- competition) and not *7 to fewer than all agreement reference agreement. nants from the covenants, the fact that the section of of its that, if the that problem position with defining “Existing agreement the 1999 found in the 1984 assignment obligation Confidentiality is titled “Con- Agreement” incorporated was into the agreement Confidentiality, Employee was), tinuation of (and Epocal agrees that agreement Non-Competition Non-Solicitation similar interpret no reason to there is to establish is not sufficient Covenants” to exclude agreement terms of the 1999 agreement was intended obligation. assignment any assignment cove- exclude form the 1992 and The differences between prior agreements. nant found respect with to the man- agreements agreement the 1992 was agree- It is true that they refer to the 1984 ner which First, employment agreement whereas 1992 and 1999 an are minor. consultancy agree- language agreement was slightly use different However, (“Confiden- change in the nature ment. refer to the 1984 with i-STAT relationship of Dr. Lauks’s Non-Competition Agreement” tiality and intended suggest parties that the Confidentiality “Existing practice their established 1999), that to deviate from but it is clear Agreement” entirety the 1984 identifying the references to simply shorthand both are Second, name consist- agreement with a shorthand the 1992 agreement. some, all, of but not of a reference agreement refers to in that 1984 docu- contained the covenants disagree majori- with I
ment. Because
ty’s conclusion that unambiguously excludes assignment obligation initial-
version of the I agreement,
ly contained in the
would reverse the court’s dismissal district the district
order. I would direct court on permit discovery and to
remand consid- bearing
er extrinsic on whether evidence parties Dr. Lauks contemplated an assignment
would have continue to obli-
gation with to inventions respect made and,
the course of his for i-STAT if work
so, whether either the inventions at
issue in within the scope this case fall obligation.
that assignment FUELS, INC., System Energy
SYSTEM
Resources, Mississippi and South Association,
Electric Power Plain-
tiffs-Appellants, STATES,
UNITED Defendant- Appellant.
Cross *8 2010-5116,
Nos. 2010-5117. Appeals, Court of States
Federal Circuit. 19, 2012.
Jan.