On February 5, the Federal Circuit held that a consultant’s failure to list prior inventions as required in a consulting agreement did not result in an automatic assignment of those inventions to employer AngioScore Inc. The court said that this failure would, at most, give AngioScore a non-exclusive license to any prior invention incorporated into an AngioScore product during the term of the agreement. § 9(a) of the agreement at issue granted AngioScore a nonexclusive license in any prior inventions incorporated into AngioScore products during the term. It required the consultant to attach a list of all prior inventions relating to AngioScore’s business, products or research, and provided that failure to do so amounts to a representation that no such prior inventions exist. However, the consultant failed to list his work on a prior related study because he did not regard it as an invention at the time. The district court held that this failure resulted in an assignment of that invention to AngioScore, not just a license. The district court based its reasoning on the purpose of the consulting agreement, together with the language of § 9(a) and § 9(b), a provision which separately assigned to AngioScore all rights for inventions conceived, developed or reduced to practice during the term. The Federal Circuit disagreed. Interpreting the contract according to its plain meaning under California law, the Federal Circuit noted that nothing in § 9(a) provides that unlisted prior inventions are assigned rather than licensed. The court also held that estoppel by contract did not apply because neither the consultant nor the third party to whom the consultant assigned his rights sought to enforce any rights under the contract. The Federal Circuit did not pass judgment on whether § 9(b) would have separately assigned these rights to AngioScore, noting that it was a question of fact whether the consultant’s continued work on the prior invention after the agreement’s effective date amounted to “development” or “reduction to practice.”

Read more about TriReme Med., LLC v. AngioScore, Inchere (behind paywall), or read the Federal Circuit’s opinion here (PDF).