Thursday, July 02, 2015

Patentee WesternGeco does well against ION GEOPHYSICAL CORPORATION at CAFC

WesternGeco did well at the CAFC:

We affirm in all respects,
except that we reverse the
district court’s award of lost profits
resulting from conduct
occurring abroad.

Of the matter of employment contracts:

Both inventors testified that they transferred their
rights to the inventions they developed to their employers
pursuant to their employment contracts. (...)

ION argues that there is a defect in this
chain of title.
It contends that the inventors, while per-
haps obligated to transfer rights in the invention to their
employers (Geco subsidiaries)
under their employment agreements, failed to testify that such a transfer in fact
It is well-established that employment con-
tracts do not necessarily automatically assign patent
rights to the employer.
See Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010).
“[C]ontracts that obligate the owner to grant rights in the
future do not vest legal title to the patents in the assign-
ee.” Id. at 1364–65. In such circumstances, the employee
must still formally assign the rights to the patent to the
employer in order to convert the employer’s contractual
right to the technology into a vested
ownership interest.

The simple answer is that even if the inventors still
owned the rights to the invention after the 2000 merger
agreement, the inventors transferred their interests in
the pending patent applications to STC in 2001.

Of foreign issues:

The presumption against extraterritoriality is well-
established and undisputed. As the Supreme Court ruled
in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007),“
[t]he presumption that United States law governs do-
mestically but does not rule the world applies with par-
ticular force in patent law. The traditional understanding
that our patent law operates only domestically and does
not extend to foreign activities is embedded in the Patent
Act itself, which provides that a patent confers exclusive
rights in an invention within the United States.”
Id. at 454–55 (citation , alterations, and
internal quotation marks omitted).
See also Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972)
(“Our patent system makes no claim to extraterritorial effect; ‘these
acts of Congress do not, and were not intended to, operate
beyond the limits of the United States.’” (quoting
Brown v. Duchesne, 60 U.S. 183, 195 (1856)));
Equal Emp’t Opportunity Comm’n v. Arabian Am. Oil Co., 499 U.S.
244, 248 (1991) (“It is a longstanding principle of Ameri-
can law ‘that legislation of Congress, unless a contrary
intent appears, is meant to apply only within the territo-
rial jurisdiction of the United States.’” (quoting
Foley Bros. v. Filardo, 336 U.S. 281, 285 (1949))).

Judge Wallach's dissent-in-part:

I agree with the majority’s holdings
with respect to standing, infringement, and willfulness. However, in an
effort to respect the presumption against the
extraterritorial application of United States law, the
majority erroneously declines to consider WesternGeco
L.L.C.’s (“WesternGeco”) lost foreign sales when
determining damages for infringement under 35 U.S.C. §
271(f) (2012). Because, under this court’s precedents
and those of the United States Supreme Court, the patent
statute requires consideration of such sales as part of the
damages calculation, I respectfully dissent.


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