Contract for consulting work only granted non-exclusive license, not an assignment, for work done before effective date of consulting agreement

Trireme Medical, LLC v. AngioScore, Inc., No. 2015-1504 (Fed. Cir. Feb. 5, 2016)

A potential infringer sued to correct the inventorship on three patents owned exclusively by a competitor. The potential infringer claimed an ownership interest in the three patents by an assignment from an unnamed inventor and sought to correct the inventorship on the patents. The district court dismissed the case for lack of standing, and the potential infringer appealed.  

On appeal, the patentee claimed that the unnamed inventor had assigned any interest in the patents as part of a consulting agreement, which included clauses covering any inventive work that might have taken place prior to the effective term of the agreement. After reviewing the consulting agreement, the Federal Circuit disagreed and held that under California law, the agreement could not be read as an assignment of inventive work that occurred prior to the effective date of the agreement. At best, the agreement granted a non-exclusive license to the patentee, and the unnamed inventor was still free to assign his interest in the patents to a third party.  

The Federal Circuit reversed and remanded to the district court to resolve the question of whether the alleged inventor’s continuing work after the effective date of the agreement amounted to development or reduction to practice of the actual inventions claimed in the patents.

A copy of the opinion can be found here.