Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

 

Whether a separate patent application is to be deemed already assigned as part of the “inventions and discoveries” of another previously assigned patent application is determined by comparing the claims of the new application to the specification of the original application.

MHL Tek, LLC v. Nissan Motor Co., No. 2010-1287, -1317, 1318 (Fed. Cir. Aug. 10, 2011).

Inventors of a tire pressure monitoring system filed several applications.  Inventors assigned all rights to the “inventions and discoveries” in one pending patent application to a first company.  That first company then assigned the “inventions and discoveries” of that same application to a second company.  Two patents issued from that application.  A third patent issued from a separate application that was very similar to the original application.  Later, the inventors directly assigned rights to all three issued patents to the plaintiff.  The plaintiff also secured an assignment from the first company, but not the second.

The district court held that the first two patents had been assigned to the second company, and therefore, the plaintiff did not have standing to sue.  But the third patent, which derived from a different parent, was not covered by any agreement, so the case proceeded on the merits.  The Federal Circuit reversed, holding that the third patent, though not directly related, was so close to the first two patents, that it had been assigned to the second company by the “inventions and discoveries” language of the agreements.

To reach this conclusion, the Federal Circuit compared the claims of the third patent to the specification of the originally transferred patent application.  The panel found that all elements of the claim were disclosed by that specification, so the third patent was an “invention and discovery” transferred by the inventors.  As such, the later assignments by the inventors and first company to the plaintiff were invalid, and the plaintiff lacked standing. 

A copy of the opinion can be found here.

   
If you have questions about the summaries that appeared in this bulletin, or would like to learn more about any of these cases, please contact one of the litigation partners listed here. If you have questions or comments about Winston & Strawn’s Federal Circuit Patent Decision Summaries or would like to be added to the mailing list, please contact one of the editors: Kathleen Barry at (312) 558-8046, Mike Brody at (312) 558-6385, Jim Hurst at (312) 558-5230, or Scott Blackman at (202) 282-5795.
 
   

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