Friday, February 05, 2016

CAFC reverses district court in AngioScore/TriReme case

The issue of conveyance of patent rights of a consultant arises in the AngioScore case, in which appellant TriReme won a remand.

AngioScore, Inc. (“AngioScore”) claims exclusive ownership of U.S. Patent Nos. 8,080,026 (“the ’026 patent”), 8,454,636 (“the ’636 patent”), and 8,721,667 (“the ’667 patent”) (collectively, “the AngioScore patents”). TriReme Medical, LLC (“TriReme”), claiming to have received an assignment of an interest in the AngioScore patents from Dr. Chaim Lotan, brought suit for correction of inventorship. It sought to have Dr. Lotan named as an inventor on the patents pursuant to 35 U.S.C. § 256. The district court dismissed for lack of subject matter jurisdiction, holding that any interest Dr. Lotan may have had in the AngioScore patents had been assigned earlier to AngioScore under a consulting agreement, and that TriReme as a consequence lacked standing. TriReme appeals. We reverse and remand for further proceedings.

Two contract provisions were relevant.

Of section 9(a):

What § 9(a) does, at most, is grant AngioScore a nonexclusive license in the event that the consultant incorporates a Prior Invention into an AngioScore product during the term of the Consulting Agreement. But such license is not exclusive and would not prevent Dr. Lotan from subsequently assigning his rights in those contributions to TriReme. In short, the district court erred to the extent it relied on § 9(a) to find that Dr. Lotan assigned his rights to AngioScore.

Of section 9(b):

Whether Dr. Lotan assigned his rights under § 9(b) thus depends on whether Dr. Lotan’s continued work on AngioSculpt after the effective date in fact amounted to “developing,” or “reducing to practice” an “invention,” “development,” or “improvement” pursuant to § 9(b). Id. Only if Dr. Lotan’s continued work after May 1, 2003, constituted “developing,” or “reducing to practice” would his inventive contribution have been assigned to AngioScore under § 9(b) of the Consulting Agreement. Id. It is undisputed that while Dr. Lotan no longer worked on the physical design of the catheter after the effective date, he continued “talking” with AngioScore, performing work relating to designing, implementing, and analyzing clinical trials. J.A. 14. The parties dispute the
significance of this clinical trial work, however, disagreeing as to whether it amounted to “conceiving,” “developing,” or “reducing to practice” an “invention,” “development,” or “improvement” pursuant to § 9(b). Discovery before the district court was limited regarding Dr. Lotan’s work after May 1, 2003, and there was no trial. Nor did the district court make any findings about this work. The district court merely found that Dr. Lotan’s post-effective date work on AngioSculpt “might have amounted to” “developing” or “reducing to practice” his recommendations.1 J.A. 15. Whether this work falls under § 9(b) remains a question of fact that cannot be resolved on a motion to dismiss. We remand for the district court to consider whether Dr. Lotan’s continued work on AngioSculpt after the effective date came within the language of § 9(b).

The decision notes "costs to appellee [AngioScore]".


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