Tuesday, April 20, 2010

Nike at the CAFC

The conclusion of the CAFC decision in Gillig vs. Nike states:

we affirm the [ND Tex] district court’s judgment that the
trade secret claims are barred by the statute of limitations. We reverse the court’s
judgment that the inventorship claims are barred by res judicata (except as to Triple
Tee’s claims based on the alleged 2000 assignment), and remand for further
proceedings on those claims.

Of the part of the decision in which Nike lost:

We agree that res judicata in general does not bar the
inventorship claims. Therefore, we reverse the district court’s dismissal of the
inventorship claims, with one exception.


In any event, we need not decide whether in this case Gillig controlled the
litigation in Triple Tee I, because the “control of litigation” exception does not apply to
claim preclusion but only to issue preclusion or collateral estoppel. Montana, 440 U.S.
at 154 (“Preclusion of such nonparties falls under the rubric of collateral estoppel rather
than res judicata because the latter doctrine presupposes identity between causes of
action. And the cause of action which a nonparty has vicariously asserted differs by
definition from that which he subsequently seeks to litigate in his own right.”);


To the extent
that Triple Tee is asserting an inventorship correction claim based on a purported 2000
assignment, that claim is, of course, barred, since the district court already found that
there was no assignment of rights in 2000. However, to the extent that Triple Tee is
asserting an inventorship correction claim based on a later 2005 assignment, there is no
bar. The first lawsuit did not address Triple Tee’s claims based on the 2005
assignment. The district court held that any 2005 assignment could not retroactively
resolve the standing issue of Triple Tee I. 2007 WL 4260489, at *22. Indeed, the court
stated that in light of the events occurring after the filing of the first action, “the court
would be at a loss as to what parties have ownership interests in the intellectual
property involved in this litigation.” Id. at *28.


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