While the burden of establishing standing to assert a patent lies with the patent owner, the burden of challenging the presumption of validity created by the PTO’s recording of an assignment lies with the party challenging the assignment.

The International Trade Commission (“ITC”) issued an exclusion and cease and desist order on importation of certain Global Positioning System (“GPS”) devices and products after finding that the devices and products infringed certain patents. The alleged infringers challenged the patent owner’s standing claiming that the patent owner did not join all co-owners in the suit. The ITC held that the patent owner had standing. The Federal Circuit affirmed.

“Absent the voluntary joinder of all co-owners of a patent, a co-owner acting alone will lack standing.” The burden of establishing standing lies with the alleged patent owner, and the burden of challenging the presumption of validity created by the PTO’s recording of an assignment lies with the party challenging the assignment. In this case, the patentee met its burden to establish standing by a properly recorded assignment.

In opposition, the alleged infringer asserted that the inventor had conceived of the invention while working at a prior employer. The inventor’s work for the prior employer was subject to an agreement assigning “all inventions . . . which are related to or useful in the business of the Employer.” Applying Federal law, the court explained that the inventor’s agreement with his former employer automatically transferred title of any inventions covered by the agreement by operation of law. Applying state law, the court found that the “related to or useful in the business of the Employer” clause of the agreement was ambiguous. Because this phrase was ambiguous, the ITC properly looked to the patentee’s and the former employer’s interpretation of the agreement to determine whether the former employer was a co-owner. Based on their positions in prior litigation, it was clear that the patentee and the former employer had both recognized that the former employer was not an owner of the invention. Accordingly, the ITC properly found that the former employer was not a co-owner and that the patentee had standing.

A copy of the opinion can be found here.