Wayback Machine Helps Prove Exhibit was Prior Art

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In Valve Corporation v. Ironburg Inventions Ltd., [2020-1315, 2020-1316, 2020-1379] (August 17, 2021), the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded two PTAB decisions determining that some claims of U.S. Patent No. 9,289,688 were shown to be unpatentable, while other claims of the ‘688 patent and the claims of U.S. Patent No. 9,352,229 were not shown to be unpatentable.

The ’688 patent is directed to an improved controller for a games console that is intended to be held by a user in both hands in the same manner as a conventional controller that comprises additional controls located on the rear of the controller. The ’229 patent is directed to a handheld controller for a games console, wherein the controller further includes at least one additional control located on a back of the controller.

An issue in both of the appeals is whether an Exhibit to the petition relied on by Valve was shown to be a printed publication and thus prior art under 35 U.S.C. § 102(a)(1). Valve asserted that the Exhibit was a printed copy of an online review of an Xbox 360 controller published on October 20, 2010. Valve argued that the Exhibit was prior art because it was a printout of the same online article by Dave Burn that was cited and enclosed in the prosecution histories of the ’688 patent and ’229 patent.

The Board rejected Valve’s showing on the ground that the Exhibit had not been shown to be the same as the asserted prior art documents in the prosecution histories. This is essentially a determination that Valve failed to prove that the Exhibit was what Valve what claimed it to be, which is an issue of authentication. See Fed. R. Evid. 901(a) (“To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must pro-duce evidence sufficient to support a finding that the item is what the proponent claims it is.”). The Federal Circuit noted that the Exhibit could be authenticated by a comparison with an authenticated specimen by an expert witness or the trier of fact, and that such authentication by comparison is rountine, and that the Board had an obligation to make such a comparison. The Federal Circuit concluded that the Exhibit is substantively the same as articles in the prosecution histories.

The Federal Circuit further rejected the argument that the Exhibit has been shown to be publically accessible before the priority date. The Federal Circuit said that there was overwhelming evidence that the article in another of Ironburg’s patents was prior art, and thus the Exhibit, which is substantively the same, is also prior art. There was testimony from one of the co-inventors, that he provided information to the author of the article for promotional purposes. The timing of the publication of the article was confirmed by the patent examiner via the Wayback Machine, which the Federal Circuit found was highly persuasive evidence of public accessibility. The Federal Circuit also noted that the inventors did not dispute the publication date of the article when it was cited against them during prosecution. Finally, the Federal Circuit found that the fact that Examiner found the reference after a “brief” search was highly probative evidence of public accessibility.

The Federal Circuit reversed and remanded for consideration tha tthe Exhibit was in fact prior art.

Valve also appealed the Board’s determination that Valve failed to prove that claim 29 of the ‘688 patent and claims 1-15 and 18-24 of the ‘229 patent were unpatentable. The claims required an elongate member that “is inherently resilient and flexible.” The reference showed a member that was resiliently biased with a spring. The Board found that the spring was not part of the elongate member, and the Federal Circuit found no error in this determination.

Ironburg appealed the determination that claims of the ‘688 patent were anticipated, arguing two limitations: (1) “a first surface disposed proximate an outer surface of the case,” and (2) “a second surface opposing the first surface.”

Under the ordinary meaning of these terms, the Federal Circuit found a “first surface disposed proximate an outer surface of the case” requires that the first surface of the additional control and the outer surface of the case be arranged close or near to each other, but does not re-quire them to be facing each other, rejecting Ironburg’s construction. As to the “opposing” limitation, the Federal Circuit agreed with the Board’s construction that the “opposing” limitation is met by two surfaces that face each other or are opposite each other, and that this did not require that the surface be flat as contended by Ironburg.

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Broad, Functional Claims Made it Hard to Presume Nexus for Commerical Succes

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In Teva Pharmaceuticals International GmbH v. Eli Lilly and Company, [2020-1747, 2020-1748, 2020-1750] (August 16, 2021), the Federal Circuit affirmed that Board’s determination that the claims of U.S. Patent Nos. 9,340,614, 9,266,951, and 9,890,210 are unpatentable because they would have been obvious over the cited prior art. The patents are directed to humanized antagonist antibodies that target calcitonin gene-related peptide (“CGRP”), that has been shown to be a potent vasodilator in the periphery.

Teva raised three challenges to the Board’s decision. First, Teva contended that the Board erred as a matter of law in its motivation to combine analysis by deviating from the motivation asserted by Lilly in its petitions for inter partes review. Second, Teva contended that even under the motivation to combine that the Board did analyze, substantial evidence does not support the Board’s factual findings. And third, Teva contended that the Board erred in its analysis of secondary considerations of nonobviousness.

Lilly asserted that a skilled artisan would have been motivated to combine the teachings of the references to make a humanized anti-CGRP monoclonal antibody for therapeutic use in humans, but the Board instead considered whether a skilled artisan would have been motivated to make the antibody merely to study or use it. Teva insists that by not requiring Lilly to support its therapeutic motivation, the Board incorrectly discounted important safety and efficacy concerns that would have been demotivating factors—i.e., reasons why a skilled artisan would have been motivated not to make a humanized anti-CGRP monoclonal antibody. The Federal Circuit held that the Board did apply the motiviation that Lilly asserted. The Federal Circuit said that “common sense and scientific reality dictate that scientists do not “study or use” humanized anti-bodies with an end goal of treating diseases in test tubes or in rats. At bottom, the prior art supports a motivation to humanize antibodies with the goal of treating human disease.”

Teva also argued that the substantial evidence did not support the Board’s factual findings. The Federal Circuit agreed with Lilly that substantial evidence supports a motivation to make a humanized anti-CGRP antibody to study its therapeutic potential for use in treatment of human disease, noting that Lilly identified evidence that supports the Board’s reasonable readings of each reference. Under the deferential standard of review, the Federal Circuit could not replace the Board’s reasonable interpretation of references with Teva’s interpretation.

Finally, with respect to secondary considerations, the Board found that the commercial products and the license lacked sufficient nexus to the challenged claims. Teva argued that the Board made two legal errors: first, in finding no presumption of nexus between the claims and the secondary considerations based on the commercial products; and second, with regard to the asserted licenses, Teva argued that the Board erred by focusing on the licensee’s products rather than the scope of the license.

The Federal Circuit found that the Board erred in its articulation of the standard for presuming nexus, but nonetheless conducting the necessary factual analysis of the unclaimed features of the commercial products, and reached the correct conclusion that no presumption of nexus applied. The Federal Circuit noted that the claims at issue used functional language, and that a claim to “anything that works” hardly has a nexus to any particular product. Because the claims in this case have a broad scope due to their lack of structural limitations, the unclaimed features in the commercial products cited here are of particular importance to the coextensiveness analysis. The Federal Circuit thus found that the Board’s factual findings regarding unclaimed features are thus supported by substantial evidence, and Teva has not shown otherwise.

Teva also argued that the Board erred by requiring a direct nexus between the challenged claims and the licensee’s products. The Federal Circuit found that the Board’s conclusion that the license lacked nexus to the challenged claims was supported by substantial evidence. The significance of licensing a patent as a secondary consideration in enhancing the nonobviousness of an invention is that an independent party with an interest in being free of the patent has chosen to respect it and pay a royalty under it rather than litigate and invalidate it. Such action tends to support its validity. The Federal Circuit said that given that 188 patents were licensed, the nexus between the license and the validity of any particular claim is rather tenuous to say the least. The Federal Circuit noted that Teva failed to show anything more than the existence of the license. Teva did not present direct evidence that the licensee’s motivation for entering into the license was related to the validity or enforceability of the patents at issue.

The the Step that Can Be Performed in The Human Mind is a Telltale Sign of Abstraction

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In Personaweb Technologies LLC v. Google LLC, [2020-1543, 2020-1553, 2020-1554] (August 12, 2021), the Federal Circuit affirmed the district court’s judgment on the pleadings that various
claims of U.S. Patent Nos. 7,802,310, 6,415,280, and 7,949,662 were ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101. The patents relate to data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.

The Federal Circuit began its review at Step 1 of the Alice inquiry, deciding whether the claim is directed to a patent-ineligible concept. The Court evaluated the focus of the claimed advance over the prior art’ to determine if the claim’s “character as a whole” is directed to excluded
subject matter. The Federal Circuit agreed with the district court that the patents are directed to a three-step process: (1) using a content-based identifier generated from a hash or message digest function, (2) comparing that content-based identifier against another content-based identifier or a request for data; and (3) providing access to, denying access to, or deleting data. The Federal Circuit concluded that the claims are directed to the use of an algorithm-generated contentbased identifier to perform the claimed data-management functions (including controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent).

The Federal Circuit said that these functions are mental processes that “can be performed
in the human mind” or “using a pencil and paper” — a telltale sign of abstraction. The fact that the process are performed in a computer environment didn’t transfigure the idea out of the
realm of abstraction.

The Federal Circuit recognized that the step-one inquiry looks to the claims character
as a whole rather than evaluating each claim limitation in a vacuum, but said the claims are clearly focused on the combination of those abstract-idea processes, and stringing together the claimed steps by adding one abstract idea to another amounts merely to an abstract
idea. The Federal Circuit concluded that “[t]he claims as a whole, then, are directed to a medley of mental processes that, taken together, amount only to a multistep mental process.” Ultimately, the focus of the claims is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” In other words, the claims focus on mere automation of manual processes using generic computers.

At Step Two the Federal Circuit undertook a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Personalweb argued that the claims contain an inventive concept because they “recite an application that makes inventive use of cryptographic hashes—a use that was neither conventional nor routine prior to the patents.” However, the Federal Circuit said this was not something “more,” let alone anything “significantly more,” than the abstract idea itself. Ultimately, the Federal Circuit said “The district court had it right: there is ‘nothing “inventive” about any claim details, individually or in combination, that are not themselves abstract ideas.’”

The Federal Circuit affirmed the judgment of invalidity

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Silence does not Support Claim Construction Excluding Prior Art

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In Seabed Geosolutions (US) Inc., v. Magseis FF LLC, [2020-1237] (August 11, 2021), the Federal Circuit vacated and remanded the PTAB’s determination that U.S. Reissue Patent No. RE45,268 was not anticipated or obvious, becase if a error in the PTAB’s claim construction.

The ’268 patent is directed to seismometers for use in seismic exploration, and all of its claims required a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. The Board concluded that the prior art did not disclose this geophone requirement, and thus the claims had not been shown to be anticipated or obvious.

The Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. It found, based entirely on extrinsic evidence, that “fixed” had
a special meaning in the relevant art at the time of the invention: “not gimbaled.” The Federal Circuit noted that

If the meaning of a claim term is clear from the intrinsic evidence, there is no reason
to resort to extrinsic evidence. The Federal Circuit concluded, based upon the intrinsic evidence, that the word fixed here carries its ordinary meaning, i.e., attached or fastened:

The adverb internally and the preposition within straddling the word fixed indicate that it specifies the geophone’s relationship with the housing, not the type of geophone. The plain
language therefore supports interpreting “internally fixed within” to mean mounted or fastened inside.

The Federal Circuit found the specification was consistent with its construction:

The specification describes mounting the geophone inside the housing as a key feature of the invention. By contrast, it says nothing about the geophone being gimbaled or non-gimbaled. Given that context, a skilled artisan would understand the claim term “geophone internally
fixed within [the] housing” merely specifies where the geophone is mounted and has nothing to do with gimbaling.

The Federal Circuit noted that “[t]he specification never mentions gimbaled or non-gimbaled
geophones, nor does it provide a reason to exclude gimbals.” The Court concluded “[t]hat silence does not support reading the claims to exclude gimbaled geophones.” The patentee conceded that gimballed geophones were known, and that the specification mentioned gimballed claims. The Federal Circuit reasoned that “[i]If the patentee had wanted to distinguish between gimbaled and non-gimbaled geophones, it knew how to do so and could have indicated as much in the specification. But it did not.”

The Federal Circuit said that the intrinsic evidence as a whole supports an interpretation of “geophone internally fixed within [the] housing” that does not exclude gimbaled geophones. The Court concluded that the Board erred in reaching a narrower interpretation, and vacated and remanded for further proceedings consistent with this opinion.

Defendant’s Trademark Avoids Design Patent Infringement

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On August 6, 2021, a California federal jury decided that Seirus Innovative Accessories did not infringe Columbia Sportswear’s U.S. Patent No. D657,093. Their verdict is notable because nearly four years ago, a jury reached the opposite result and awarded Colombia Sportswear $3.4 million before the Federal Circuit vacated and remanded the case.

Colombia’s patent was on a wave design applied to the lining of sportswear:

heat reflective material

Seirus used a similar wave patter on its liners, but interspersed the design with its trademark:

Serius materials

The Federal Circuit vacated the verdict because the district court granted summary judgment of infringement, rather than allowing the jury to determine infringement, and because the district court misapplied L.A. Gear for the proposition that logos should be wholly disregarded in the design-infringement analysis.

The jury instruction was fairly standard, and did not even mention the possible effects of the presence of defendant’s trademark on the infringement determination.

Claims are No Nose of Wax; Infringement Determined Under Same Construction as Validity

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In Data Engine Technologies LLC v.  Google LLC, [2021-1050] (August 26, 2021) the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 5,590,259; 5,784,545; and 6,282,551 directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets.

The preamble of the claims at issue recited: “In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display.”  In defeating a prior 101 challenge, DET argued that the invention solved a problem unique to three-dimensional spreadsheets.  On remand, Google asked the district court for a determination whether the claim preamble was a limitation, and if so, what it meant.  The district court held that the preamble was limiting, and required a mathematical relation among cells on different spreadsheets, whereupon Google moved for summary judgment of non-infringement since its accused product was not a three-dimensional spreadsheet.  The district court granted summary judgment, and DET appealed.

On appeal there was no dispute that Google did not infringe under the district court’s construction of “three-dimensional spreadsheet,” the issue being whether the preamble is in fact limiting and, if so, whether the district court’s construction of three-dimensional spreadsheet was correct.  The Federal Circuit noted that DET’s assertion that the preamble term “three-dimensional spreadsheet” is not limiting effectively seeks to obtain a different claim construction for purposes of infringement than the Federal Circuit applied (at DET’s insistence) in holding the claims eligible under § 101.  Noting that a  claim is not a nose of wax, the Federal Circuit said a patentee relies on language found in the preamble to successfully argue that its claims are directed to eligible subject matter, it cannot later assert that the preamble term has no patentable weight for purposes of showing infringement. Thus the Federal Circuit concluded that the preamble term “three-dimensional spreadsheet” was limiting.

 Turning to the district court’s construction of “three-dimensional spreadsheet,” the parties agreed that a three-dimensional spreadsheet requires cells “arranged in a 3-D grid,” but not on whether it also requires “a mathematical relation among cells on different spreadsheet pages,” as required by the district court’s construction.  The Federal Circuit found that neither the claims themselves nor the prosecution history answered the question of whether a three-dimensional spreadsheet requires a mathematical relation among cells on different spreadsheets.  However, based upon the prosecution history, the Federal Circuit agreed with the district court that the preamble term “three-dimensional spreadsheet” requires a mathematical relation.  During prosecution of the application that led to the ’259 patent, the applicants provided an explicit definition of a “true” three-dimensional spreadsheet and distinguished prior art under this definition.  Giving effect to this express definition in the prosecution history, the Federal Circuit determined that the claims require a three-dimensional spreadsheet that “defines a mathematical relation among cells on the different pages.”  The Federal Circuit rejected DET’s arguments that the statements did not rise to the level or clear and unmistakable disclaimer,  noting that consistent with the public notice function of the prosecution history, the public is entitled to rely on these statements as defining the scope of the claims.

Definitions can be very helpful to the patent applicants in giving concrete meaning to the claims, but they can also be very limiting. It’s not that applicants should not use definitions, but that they should be used cautiously. A definition that seems harmless in one context, can be disasterous in another context.

Drug Labeling that Excludes Patented Use Can Still Induce Infringement

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In Glaxosmithkline LLC v. Teva Pharmaceuticals USA, Inc., [2018-1976, 2018-2023] (August 5, 2021), the Federal Circuit vacated the grant of JMOL in favor of Teva, and reinstated the jury’s verdict and damages award for infringement of RE40,000, and remanded for appropriate further proceedings.

The ’000 patent claims a method of decreasing mortality caused by chronic heart failure by administering carvedilol with at least one other therapeutic agent.

Teva argued it could not have induced infringement prior to 2011, because it had “carved out” the indication and prescribing information for treatment of congestive heart failure in its 2007 label under section viii, and that it could not be be liable for inducement for any time period because it did not cause others to infringe the method claimed in the ’000 patent. The jury found the ’000 patent was not invalid, that Teva induced infringement of claims 1–3 during the partial label period proir to 2011, and that Teva induced infringement of claims 1–3 and 6–9 during the full label period after 2011. The jury assessed damages based on a combination of lost profits and a reasonable royalty and found Teva’s infringement willful.

The district court granted Teva’s renewed motion for JMOL, finding that substantial evidence did not support the verdict of induced infringement because GSK failed to prove that Teva’s alleged inducement, as opposed to other factors, actually caused physicians to directly infringe by prescribing generic carvedilol for the treatment of mild to severe chronic heart failure.

The Federal Circuit agreed with GSK that substantial evidence supports that Teva actively
induced by marketing a drug with a label encouraging a patented therapeutic use. The Federal Circuit said that the labeling did not omit all patented indications or merely note (without mentioning any infringing uses) that FDA had rated a product as therapeutically equivalent to a brand-name drug. Instead, the Federal Circuit said this was a case in which substantial evidence supports a jury finding that the patented use was on the generic label at all relevant times and that, therefore, Teva failed to carve out all patented indications. The Federal Circuit address the concerns of several amici, nothing that its narrow, case-specific review of substantial evidence does not upset the careful balance struck by the Hatch-Waxman Act regarding section viii carve-outs.

35 U.S.C. § 271(b) provides “Whoever actively induces infringement of a patent
shall be liable as an infringer.”The Federal Circuit explained that “[a] finding of inducement requires establishing “that the defendant possessed specific intent to encourage another’s infringement.” This requires a plaintiff to show that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements. The Federal Circuit said that when a plaintiff relies on a drug’s label accompanying the marketing of a drug to prove intent, the label must encourage,
recommend, or promote infringement.

The Federal Circuit found that despite Teva’s purporting to carve out the patented congestive heart failure indication, and its deletion of the indication from its pre-2011 partial label, substantial evidence supports the jury’s finding that Teva induced doctors to infringe the method of use claimed in the ’000 patent. GSK argues that substantial evidence supports
the jury’s verdict that Teva’s partial label encouraged an infringing use (via the post-MI LVD indication) and that Teva’s marketing materials encouraged prescribing carvedilol in a manner that would cause infringement of the ’000 patent, and the Federal Circuit agreed. GSK provided substantial evidence that Teva’s partial label instructed the method of use
claimed in the ’000 patent and thus was not a skinny label, because some of the labeled incidations overlapped the patented process.

Skimpy Proof of a Regular and Established Place of Business Bares Absence of Venue for Corporate Affiliates

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In Andra Group, LP v. Victoria’s Secret Stores, LLC, [2020-2009] (August 3, 2021), the Federal Circuit affirmed the dismissal of three defendants for improper venue pursuant to 28 U.S.C. § 1400(b).

Andra sued for infringement of U.S. Patent No. 8,078,498 directed to displaying articles on a webpage, including applying distinctive characteristics to thumbnails and displaying those thumbnails in a “master display field.” Defendants argued that venue
was improper because Victoria’s Secret Stores did not commit acts of infringement
in the District, and the related defendants did not have regular and established places of business in the District.

The Federal Circuit noted that because each defendant is incorporated in Delaware, no defendant “resides” in Texas for the purpose of patent venue. Thus, to establish venue in this case, Andra must show that each Defendant committed acts of infringement and maintains a regular and established place of business in the Eastern District of Texas. While Victoria’s Secret Stores did have a place of business in the District, the other defenants did not. Andra argued, however, that Victoria’s Secret Stores’ locations are “a regular and established place of business” of the related entities because Victoria’s Secret Stores’ employees are agents of the related defendants, or, alternatively,
because the related defendants have ratified Victoria’s Secret Stores locations as their places of business.

The Federal Circuit examined the relationship between Victoria’s Secret Stores and the related entities, and agreed that none of the facts alleged by Andra are sufficient to
prove that Stores employees are agents of the other defendants. On Andra’s ratification theory, the Federal Circuit noted that “where related companies have maintained corporate separateness, the place of business of one corporation is not imputed
to the other for venue purposes. The Federal Circuit further noted that the fact
that the entities work together in some aspects, is insufficient to show ratification.

Giving reasoned consideration to all relevant factors or attributes of the relationship” between Victoria’s Secret Stores and the related defendants, the Federal Circuit concluded that Andra has not met its burden to related entities have ratified Victoria’s Secret Stores locations as their own places of business such that they may be said to maintain a regular and established place of business in the District.

The Federal Circuit thus affirmed the dismissal of the related entities who did not maintain employees or agents in the District and had not ratified the locations of a related entity as their own.

Following the Rules is Not Enough (Check the Statutes)

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In Mondis Technology Ltd. v. LG Electronics Inc., [2020-1812] (August 3, 2021), the Federal Circuit dismissed LG’s appeal from a jury verdict that it infringed U.S. Patent No. 7,475,180, directed to a display unit configured to receive video signals from an external video source .

The jury found that the accused LG televisions infringed claims 14 and 15 of the ’180 patent, that the claims were not invalid, and that LG’s infringement was willful, and awarded plaintiffs $45 million in damages. Following the jury verdict, LG filed several post-trial motions including: (1) a motion for JMOL or new trial of non-infringement, (2) a motion for JMOL or new trial of invalidity, and (3) a motion for JMOL, new trial, or remittitur regarding the damages award and willfulness finding.

On September 24, 2019, the district court denied LG’s motions regarding infringement, invalidity, and willfulness but ordered further briefing on damages. On April 22, 2020, the district court granted LG’s motion for a new trial on damages. Less than 30 days later, on on May 8, 2020, LG filed notice of interlocutory ppeal challenging the district court’s decision denying LG’s post-trial motions regarding infringement, invalidity, and willfulness (all of which were decided in the September 24 Order).

The problem for LG is that its interlocutory appeal is governed by 28 U.S.C. § 1292(c)(2), which provides the Federal Circuit with exclusive jurisdiction over “an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting.” 28 U.S.C. § 2107(a) sets the time for appeal as “within thirty days after the entry of such judgment, order or decree.” Under § 1292(c)(2), a judgment is final except for an accounting when all liability issues have been resolved, and only a determination of damages remains.

The September 24 Order resolved all issues of liability, so the appeal was due by October 24, and thus the May 2020 filing was more than six months late, and thus the Federal Circuit had no jurisdiction to consider the appeal.

LG argued that FRAP 4(a)(4) instructs that, if a party timely files any of several enumerated motions, including post-trial motions for judgment under FRCP 50(b) or for a new trial under FRCP 59, “the time to file an appeal runs for all parties from the entry
of the order disposing of the last such remaining motion.”

The Federal Circuit noted that LG’s timeliness arguments focus on the Federal Rules,
rather than the statutory requirements for jurisdiction, observing that the Rules cannot override federal statute, and to the extent that there is any conflict between the Rules and federal statutes, the statutes must prevail.

However, not all is lost for LG. While its interlocutory appeal was dismissed, LG is not precluded from from challenging the liability determinations of the district court under our § 1295 jurisdiction once the damages determination is completed.

I will Gladly Assign to You Today, an Invention I will Make Tomorrow

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In Omni Medsci, Inc. v. Apple, Inc., [2020-1715, 2020-1716] (August 2, 2021), the Federal Circuit affirmed the district court’s holding that the University of Michigan bylaws did not effectuate a present automatic assignment of Dr. Islam’s patent rights and therefore affirm the district court’s denial of Apple’s motion to dismiss on the ground that Omni, Dr. Islam’s assignee, had standing.

The University of Michigan’s by laws provide that:

Patents and copyrights issued or acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly (e.g., through the use of University resources or facilities) by funds administered by the University regardless of the source of such funds, and all royalties or other revenues derived therefrom shall be the property of the University.

Slip Op. 2-3.

If this language worked an immediate assignment of rights, then Dr. Islam’s assignment to Omni was a nullity, and Omni lacked standing, as Apple contended. The majority reviewed this language and agreed with the district court that it did not presently automatically assign
Dr. Islam’s rights to the patent but rather, at most, “reflects a future agreement to assign rather than a present assignment.” This conclusion was supported by a comparison of the language with Federal Circuit precedent; the fact tht the same language was used in other parts of the document that could not possibly be considered to be a present assignment; the fact that the language did not use “present tense words of execution;” and the fact the language was different than assignment language used by the University in other forms.

Judge Newman dissented, finding that the language in the by laws was an assignment, which meant the assignment to Omni was ineffective, and thus Omni lacked standing.

Regardless of whether you side agree the majority or with Judge Newman, both sides continue to accept without question that it is possible to make a present assignment of something that does not exist. It would foolish not to recognize that this is the law, and to use clear language of present assignment in employee agreements. However it is equally foolish not to get a confirmatory assignment once something is actually invented.