Wednesday, November 30, 2011

Employee assignment at issue in Gellman

The nonprecedential CAFC case Gellman v. Tellular reviews caselaw including DDB and Stanford/Roche, and has some interesting dicta about inventor assignment issues.

The question of whether contractual language effects a present assignment of patent rights, or an agreement to assign rights in the future, however, is resolved by the law of this court. DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008).


While it is possible for an employee to assign any and all of his rights to future inventions, this court has consistently required that present assignments of future rights expressly undertake the assigning act at the time of the agreement, and not leave it to some future date. See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841–42 (Fed. Cir. 2009) (finding present assignment in the language “I will assign and do hereby assign”), aff’d, 131 S. Ct. 2188 (2011); DDB Techs., 517 F.3d at 1290 (same, for language “agrees to and does hereby grant and assign”); Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1253 (Fed. Cir. 2000) (“hereby conveys, transfers, and assigns”); FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1573 (Fed. Cir. 1991) (“agrees to grant and does hereby grant”). By that measure, the language of the Unsigned Agreement is lacking. Rather than expressly undertake assignment at signing, it expressly delays assignment to some future date, when Mr. Seivert would “execute any and all assignments or other transfer documents” necessary to convey his rights to Cellular Alarm. The district court was therefore correct in its conclusion that the Unsigned Agreement, if enforceable as a contract, could do no more than create an equitable claim for the Lebowitz Trust. And as already mentioned equitable claims do not themselves confer standing.

The same logic applies to Ms. Gellman’s claim that the “hired to invent” doctrine can save her standing. Courts have in some cases held that the inventions of an employee hired to make that invention fairly belong to the employer. See, e.g., Solomons v. United States, 137 U.S. 342, 346 (1890). But this doctrine is expressly equitable, and creates only an obligation for the employee to assign to his employer. Melin v. United States, 478 F.2d 1210, 1213 (Ct. Cl. 1973); see also Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000). It cannot save Ms. Gellman’s case.

Of some dicta:

These efforts to demonstrate standing, however, fail as a matter of law. At the outset we note that the lack of a signed instrument, while troubling, is not fully dispositive. The Patent Act requires that all assignments of patent interests be in writing. 35 U.S.C. § 261 (2006). But there are means of transferring patent ownership beyond assignment, and not all of them require a writing. Sky Techs. LLC v. SAP AG, 576 F.3d 1374, 1381 (Fed. Cir. 2009). Neither the district court nor the parties expressly addressed whether the contract here (if one were held to exist) would be an assignment subject to the requirements of section 261. Because we conclude that Ms. Gellman’s argument fails for other reasons, we need not reach this issue.


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