Digest of Memorylink Corp. v. Motorola Solutions, Inc.No. 2014-1186 (Fed. Cir. Dec. 5, 2014) (precedential). On appeal from N.D. Ill. Before Lourie, Moore and O’Malley.

Procedural Posture: Memorylink sued Motorola asserting patent infringement claims, fraud claims, and seeking a declaration that an earlier assignment of the asserted patent to Motorola was void for lack of consideration. The patent to a wireless camera device originally named co-inventors from both companies, but Memorylink allegedly discovered the Motorola employees were not proper co-inventors. CAFC affirmed district court’s summary judgment in favor of Motorola on patent-infringement and contract claims, and dismissal of tort claims.

  • Contract Law Claim: The CAFC held that the district court properly granted summary judgment as there was “no genuine issue of material fact that consideration existed.” The assignment explicitly acknowledged consideration “for the sale, assignment, and transfer of rights relating to the wireless video technology,” which was not made invalid or nonexistent by the use of boilerplate language.
  • Tort Claims: CAFC held that the district court properly dismissed the fraud-based tort claims as barred by Illinois’ five-year statute of limitations. “Memorylink knew all the facts necessary to assert its claims, and therefore its causes of action accrued, more than five years before it filed suit.”
  • Infringement: Because the assignment was valid, Motorola as a co-owner of the asserted patent could not be liable for patent infringement.