Patent Ownership

January 19, 2012

Appeal Court Grants Decision for Epocal, Inc. in Patent Infringement Suit Over Point of Care Blood Testing.

Washington, D.C. – The Court of Appeals for the Federal Circuit has affirmed the dismissal of a patent infringement case. Patent attorneys for Abbott Point of Care of Princeton, New Jersey had filed a patent infringement lawsuit in the Northern District of Alabama alleging that Abbott should have legal title to patent no. 6,845,327, Point-of-care in-vitro blood analysis system, and 6,896,778, Electrode module which has been issued by the US Patent Office. The patents are owned by Epocal, Inc. of Ottawa, Ontario, Canada, who was named as defendant in this suit. The Northern District of Alabama had granted Epocal’s motion to dismiss and dismissed Abbott’s complaint. Abbott appealed, and the Court of Appeals for the Federal Circuit affirmed.

According to the opinion, Dr. Imants Lauks was once an employee of Abbott’s predessor company, but went on to start Epocal after he left that employment. Dr. Lauks has assigned all his patent rights to Epocal. Pursuant a series of employment and consulting contracts with Abbott, Dr. Lauks agreed to assign to Abbott all patent rights to any inventions he conceived while employed with Abbott. Abbott claims that the patents in questions cover inventions that were conceived while Dr. Lauks was employed with Abbott and therefore Abbott should have the patent rights. Epocal filed a motion to dismiss for lack of subject matter jurisdiction and failure to state a claim. Epocal claimed the patents in question were conceived after Dr. Lauks’s employment terminated, therefore Abbott has no ownership.

Chief Judge Rader, writing the opinion of the court, agreed with the district court that Abbott did not have any rights to the patents and therefore, lacked standing to bring a patent infringement lawsuit. The opinion noted that the district court had concluded the terms of the most recent agreement did not cover the invention in question. Justice Bryson wrote a dissenting opinion, noting he found that contracts to be ambiguous and would have remanded for further discovery of extrinsic evidence of the intention of the parties in entering the employment contract.

Practice Tip: Employment and consultancy contracts routinely require assignment of intellectual property rights. In this case, the language of the clause in the employment/consultancy agreement changed over time. The court discussed that if the language in the first contract would have been identical to the language in the latest contract, Abbott would have had rights to the patents in question. This illustrates the importance of having an intellectual property attorney draft these clauses carefully.
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December 17, 2011

Organic Seed Growers Bring Innovative Patent Challenge Against Monsanto

By Overhauser Law Offices, LLC

New York, NY – Earlier this year, patent attorneys for a group of 60 organizations and farmers, including the Organic Seed Growers and Trade Association, filed a patent lawsuit in the Southern District of New York against agriculture giant Monsanto Company of St. Louis, Missouri. The plaintiffs are farmers who do not want their organic seeds contaminated by the transgentic or genetically modified seeds that are produced and patented by Monsanto. The feared contamination occurs when organic seeds come into contact with genetic material from transgentic seeds through natural pollination processes, such as the wind blowing transgentic pollen to a organic farm nearby . The plaintiffs allege that, given Monsanto’s reputation for vigorously defending its patents, they have brought “this action to protect themselves from ever being accused of infringing patents on transgenic seed.” Their complaint begins: “Society stands on the precipice of forever being bound to transgenic agriculture and transgenic food. Coexistence between transgenic seed and organic seed is impossible because transgenic seed contaminates and eventually overcomes organic seed. ” The organic farmers seek a declaratory judgment that all of Monsanto’s transgentic seed patents are invalid as injurious to public health and for numerous other reasons.

Monsanto has filed a motion to dismiss arguing that the plaintiffs have not demonstrated a justiciable case or controversy and therefore the court does not have subject matter jurisdiction. Monsanto also states that it has issued a public statement declaring that its patent attorneys will not file patent infringement lawsuits against farmers who’s crops are inadvertently contaminated by its patented seeds. Monsanto is being represented by former U.S. Solicitor General Seth Waxman.

Briefing on the motion to dismiss was completed in late August so a decision could be expected at any time. An amicus curiae brief in support of plaintiffs has also been filed.

Practice Tip: Monsanto is an aggressive litigant in defending its intellectual property rights and has sued numerous Indiana farmers. Monsanto recently won the appeal of the Southern District of Indiana‘s decision against an Indiana farmer in patent infringement lawsuit, which Indiana Intellectual Property Law and News blogged about here: US Court of Appeals for the Federal Circuit Affirms the Southern District Court of Indiana’s Decision Holding Indiana Farmer Infringed Soybean Seed Patents.
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June 6, 2011

U.S. Supreme Court Sides with Roche in Patent Ownership Controversy

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court has issued its opinion in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, a patent ownership case. The Court held that the Bayh-Dole Act,35 U.S.C. §§ 200-212, “does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.” The decision affirmed the Federal Circuit Court‘s decision below. Justice Roberts delivered the opinion, which Justices Scalia, Thomas, Kennedy, Alito, Sotomayor, and Kagen joined. Justices Breyer and Ginsberg dissented.

In this case, an inventor performed some research while he worked for Stanford University and had signed a patent ownership assignment agreement with Stanford. The inventor later left this employment and performed further research, culminating in an invention, while employed by Roche. He had also signed a patent assignment agreement with Roche. Essentially, controversy was over whether Stanford or Roche had a valid assignment of the patent rights. The Supreme Court’s decision sided with Roche.

An analysis by the SCOTUS blog noted “Of particular interest to Court watchers, the Court paid no heed in either case to the views of the Solicitor General, which usually has a high degree of success in pressing government views on the Court, especially in statutory cases, and has led much of the charge criticizing Federal Circuit doctrines in the past.”

March 10, 2011

Italian manufacturer Tecnomatic files patent, trademark and other claims against Pendleton’s Delco Remy over component for hybrid electric vehicles.

By Overhauser Law Offices, LLC

Chicago, IL– Intellectual property attorneys for Italian company Tecnomatic have filed a lawsuit in the Northern District of Illinois making patent ownership, trademark infringement and other claims against automotive part company Delco Remy of Pendleton, Indiana as well as Delco Remy of Mexico and other parties. The technology at issue is High Voltage Hairpin stator winding technology that is a component of electric motors for hybrid electric vehicles. Tecnomatic alleges that it shared its technology in anticipation of a possible joint venture and that Remy breached confidentiality agreements made as part of that proposal. Tecnomatic further alleges that Remy used its confidential technology to gain business and federal grants and attempted to file patent applications with the US Patent Office without crediting Tecnomatic as inventors.
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March 1, 2011

U.S. Supreme Court Hears Arguments in Stanford University Patent Ownership Case

By Overhauser Law Offices, LLC

Washington, D.C. – On February 28, the United States Supreme Court heard oral arguments in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, a patent ownership case that has implications for Indiana patent attorney. Under the Bayh-Dole Act,35 U.S.C. §§ 200-212, institutions using federal funding to perform research gain patent rights to inventions created through the federally-funded research. In this case, an inventor performed some research while he worked for Stanford University and had signed a patent ownership assignment agreement with Stanford. The inventor later left this employment and performed further research, culminating in an invention, while employed by Roche. He had also signed a patent assignment agreement with Roche. The question is now whether Stanford or Roche has patent rights to his invention.
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February 9, 2011

U.S. Supreme Court Won’t Hear Cialis Patent Suit Against Indiana’s Eli Lilly

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court denied certiorari in an appeal from three Vanderbilt University scientists who claimed that they should share ownership of the patent rights to Cialis. The Cialis patents in question, U.S. Patent numbers 5,859,006 and 6,140,329, were filed by Icos Corporation, which was acquired by Indiana-based Eli Lilly in 2007. According to coverage by the Indianapolis Star, Cialis sales exceeded $400 million in the third quarter of 2010.

The three scientists researched phosphodiesterase enzyme (“PDE5”), the active ingredient in Cialis, and claimed that they were joint inventors of Cialis. The scientists performed initial identification of and research on PDE5. This initial research was funded by Glaxo Inc., which later sold the rights to Icos Corporation. Patent attorneys for the scientists filed a lawsuit in the U.S. District Court of Delaware alleging that the scientists should be added to the patents as joint inventors. The district court, however, granted judgment in favor of Icos. Attorneys for the scientists appealed. The Court of Appeals for the Federal Circuit affirmed and clarified the statutory standard for joint ownership of a patent in their written opinion. The court stated “a group of co-inventors must collaborate and work together to collectively have a definitive and permanent idea of the complete invention.” The court concluded that the scientist had failed to show this. Patent attorneys for the scientists sought review by the U.S. Supreme Court, which has now declined to hear the case.