CAFC in Abraxis v. Navinta: remembering Stanford/Roche

Concerning the assignment issues in the case:

On the same day this action was filed, Astra L and
AZ-AB each executed nearly identical assignments of
their respective patents to AZ-UK. The assignments
reference the April 26, 2006 APA and provide that the
assignments were executed to allow AZ-UK to “further
convey” the patents to Abraxis. On November 12, 2007,
almost eight months after filing suit, AZ-UK, in a sepa-
rate document entitled “Intellectual Property Assignment
Agreement,” “confirm[ed] the sale, assignment, convey-
ance and transfer to Abraxis, for Abraxis’ sole and exclu-
sive use and enjoyment, of all of Astra Zeneca UK’s right,
title, and interest, in and to” the asserted patents. The
agreement further stated that AZ-UK and Abraxis “con-
sider and have considered Abraxis by way of assignmentand
pursuant to the [APA], to own all rights, title, and
interest” to the asserted patents, including the right to
sue for patent infringement no later than June 28, 2006.

An issue in the case:

Navinta also filed a second Rule 12(b)(1) motion to
dismiss for lack of standing alleging that Abraxis did not
own the asserted patents at the time the complaint was
filed. See Abraxis Bioscience, 2009 WL 904043, at *1.
While acknowledging that there was a break in the chain
of title to the patents, the district court held that the
“intent” of the various Astra entities was sufficient to
imply a nunc pro tunc assignment based on the relation-
ship between the corporate entities. Id. at *4.

The CAFC addressed the standing issue:

Standing is a constitutional requirement pursuant to
Article III and it is a threshold jurisdictional issue. Lujan
v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992). We
review standing, a question of law, de novo. See Penning-
ton Seed, Inc. v. Produce Exch. No. 299, 457 F.3d 1334,
1338 (Fed. Cir. 2006); Enzo Apa & Son, Inc. v. Geapag
A.G., 134 F.3d 1090, 1092 (Fed. Cir. 1998). “To the extent
[any] jurisdictional facts are in dispute, however, the
findings of fact are reviewed for clear error.” Canadian
Lumber Trade Alliance v. United States, 517 F.3d 1319,
1330-31 (Fed. Cir. 2008); see SanDisk Corp. v. STMicro-
electronics, Inc., 480 F.3d 1372, 1377 (Fed. Cir. 2007);
Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152,
1158 (Fed. Cir. 2006).

The CAFC gave background on assignments:

We have stated that “[a]lthough state law governs the
interpretation of contracts generally . . . the question of
whether a patent assignment clause creates an automatic
assignment or merely an obligation to assign is intimately
bound up with the question of standing in patent cases.
We have accordingly treated it as a matter of federal law.”
DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517
F.3d 1284, 1290 (Fed. Cir. 2008); see Speedplay, Inc. v.
Bebop, Inc., 211 F.3d 1245, 1253 (Fed. Cir. 2000) (stating
that while the ownership of patent rights is typically a question
exclusively for state courts, the question of
whether contractual language effects a present assign-
ment of patent rights, or an agreement to assign rights in
the future, is resolved by Federal Circuit law).

The Stanford/Roche case (now going to the Supreme
Court) was mentioned:

In contrast, contracts that obligate the owner to grant
rights in the future do not vest legal title to the patents in
the assignee. Bd. of Trs. of Leland Stanford Junior Univ.
v. Roche Molecular Sys., Inc., 583 F.3d 832, 841-42 (Fed.
Cir. 2009) (cert. granted Nov. 1, 2010) (finding that “agree
to assign” contract language in a university researcher’s
patent assignment agreement with the university only
provided a promise to assign the invention in the future,
and, therefore, was trumped by “will assign and do hereby
assign” contract language in a later agreement the re-
searcher signed with a company regarding any invention
made while collaborating with the company).

As to the present case:

Here, the contractual language of the APA indicates
that the actual transfer of the asserted patents was to
occur in the future. The APA states that AZ-UK “shall, or
shall cause one or more of its Affiliates to, Transfer to the
Purchaser, and the Purchaser shall purchase and accept
from the Seller or its Affiliates, as applicable all of the
right, title and interests of the Seller and its Affiliates in”
the asserted patents.

The punchline:

The district court’s ruling to the
contrary was legal error.

The Arachnid case was mentioned:

Finally, Abraxis improperly relies on Arachnid to
support its argument that equitable title to the asserted
patents through the APA was sufficient to confer standing
to sue under the Hatch-Waxman Act. Arachnid con-
cerned a present agreement to assign rights to future
inventions. 939 F.2d at 1576, 1580. In contrast, the June
2006 IP Assignment Agreement attempted to assign
rights to existing patents, but was ineffective, because the
assignor, AZ-UK, did not own the patents at the time.
Without ownership, AZ-UK had no authority to convey
either the patents’ equitable or legal titles to Abraxis. Cf.
Arachnid, 939 F.2d at 1581. The legal title to the as-
serted patents remained with Astra L and AZ-AB until
March 15, 2007 when it was transferred to AZ-UK, leav-
ing Abraxis with defective legal title to the patents.

Abraxis v. Navinta is obviously a statement by the CAFC as to
Stanford v. Roche, and could also be a warm-up for the
standing issue in Myriad.

***Related to Myriad

Intellectual Property Rights and Innovation: Evidence from the Human Genome by Heidi L. Williams:

Celera's IP applied to genes sequenced first by Celera, and was removed when the public effort re-sequenced those genes. I test whether genes that ever had Celera's IP differ in subsequent innovation, as of 2009, from genes sequenced by the public effort over the same time period, a comparison group that appears balanced on ex ante gene-level observables. A complementary panel analysis traces the effects of removal of Celera's IP on within-gene flow measures of subsequent innovation. Both analyses suggest Celera's IP led to reductions in subsequent scientific research and product development outcomes on the order of 30 percent.