In SiRF Technology, Inc. v. ITC, issued on April 12, 2010, the Federal Circuit held that recordation of an assignment creates a presumption that the assignment is valid, which then shifts the burden to the challenger to produce evidence that the assignment is invalid or does not cover the patent-in-suit. In addition, the Federal Circuit construed the words “communication” or “transmission” of data to not necessarily require direct action by third party customers and thus obviated the need to prove joint infringement of the method claims.
Burdens of Proof For Assignments And Standing. In SiRF, the appellant-defendants challenged the assignment of the ‘346 patent-in-suit, arguing the invention was co-owned by a non-party prior employer of one of the inventors due to an employee agreement with that inventor. The Federal Circuit held, as a matter of federal law, that the recordation of an assignment by the assignee with the PTO created a presumption of validity of that assignment. Once the assignee had met its burden of production with proof of assignment recordation, then the burden shifted to the appellant-defendants challenging the assignment. They failed to rebut the presumption because there was some evidence that the prior owner believed it was not the true owner of the ‘346 patent. Hence, the assignee had standing to sue on the ‘346 patent.
Method Claims Involving Customer’s Data Transmission Do Not Require Joint Infringement. Some of the method claims contained language requiring communication or transmission of data, which the appellants argued required actions taken by customers or end users. For example, claim 1 of the ‘651 patent-in-suit states in pertinent part:
A method of receiving global positioning system (GPS) satellite signals comprising:
receiving satellite ephemeris at a first location;
communication [sic] the satellite ephemeris to a mobile
GPS receiver at a second location;
and processing satellite signals received at the mobile
Based on this and similar language requiring “communication” or “transmission,” the Commission required proof of and found joint infringement. The Federal Circuit disagreed. Although the Federal Circuit acknowledged that “communication” or “transmission” could only occur if the customer forwarded the data to an end user and the end user downloaded the data, the Federal Circuit found that the claim language was not limited to direct action by a third party and rather contemplated also an indirect action based on the specification (“The link may be a landline, or other direct communication path …. Alternative, this link may have several parts ….”). Since the method claims do not specifically require direct performance by the customer or end user, [the accused infringer] “SiRF performs the step of communicating/transmitting the files to end users’ devices because SiRF initiates the process of transmitting and communication, and the files are actually transmitted to the end users.” The Federal Circuit found direct infringement.
Application. All assignments should be recorded promptly and checked prior to filing a lawsuit, especially in situations where there are multiple inventors or owners of the patent. Such recordation provides a presumption of validity as of the date of recordation and the assignee no longer has the initial burden of producing evidence that all the assignments were valid and covered the patent-in-suit. Rather, the challenger must provide the evidence that the assignments are invalid. If the challenger provides such evidence, the ultimate burden of persuasion rests with the assignee. With respect to method claims, the application should describe both direct and indirect ways for method claims to allow broad construction as found in SiRF. As long as there is some possibility of indirect channels, SiRF refuses to narrowly construe the claims to require a direct action by a third party, which will require a difficult showing of joint infringement.