Tri-Star Electronics International, Inc., v. Preci-Dip Durtal SA, No. 2009-1337 (Fed. Cir. Sept. 9, 2010).
The patentee a Delaware company asserted a patent directed to socket contacts against an alleged infringer. The patentee company was originally incorporated as an Ohio company in 1991. In 1997, the Ohio company merged with, and formed, a new California company. The California company subsequently merged into the Delaware company in 2005. The inventor of the patent executed an assignment of his patent rights in 1999, but the assignment identified the assignee as “[the Ohio company], its successors, legal representatives, and assigns” even though the Ohio company had already merged and formed the California company. The alleged infringer filed a motion to dismiss for lack of standing, alleging that the inventor had assigned his patent rights to a non-existent entity. The district court denied the motion, and certified the ruling for interlocutory appeal, which was accepted by the Federal Circuit.
The Federal Circuit affirmed the district court’s decision. The court agreed with the district court’s holding that at the time of the inventor’s assignment of rights to the Ohio company, the California company existed as its successor and validly acquired the inventor’s patent rights. The court confirmed that it is “a fundamental precept of common law that the intention of the parties to a contract controls its interpretation.” The district court found no dispute that the inventor intended to assign his patent rights to his employer, the patentee company, and the alleged infringer offered no reason to disregard this contractual intent.
A copy of the opinion can be found here.