Personalized User Model, LLP and Yochai Konig v. Google Inc.

Docket No. 2014-1841, -2015-1022

August 18, 2015
Brief Summary:  DC denial of Google’s breach of contract claim relating to assignment of an employee’s invention affirmed.  PUM’s appeal of claim construction decision denied for lack of case or controversy under Article III.
Summary:   Google appealed from DC grant of SJMOL to Personalized User Model (PUM) and Konig regarding Google’s breach of contract counterclaim.  The opinion centers on whether Konig’s employment agreement with SRI International (a California company) captured the inventions described in his patents.  Konig signed the agreement in which “all discoveries, improvements, and inventions, including software, conceived or made by me during the period of my employment” would be “promptly disclose[d] to SRI” and agreeing both “to do all things necessary…in order to effect transfer of ownership…to SRI” and that “termination of this employment shall not release me from my obligations hereunder”.  Before leaving SRI, Konig started working on a “Personal Web” with a friend, forming a DE corporation called Utopy, and filing two provisional applications (now US 6,981,040 and 7,685,276) which were assigned to PUM.  PUM then sued Google for infringement.  Google then acquired “any rights” SRI had in the patents and brought the counterclaim for breach of contract. The FC explained the grant of JMOL was reviewed de novo under the DC’s law (Third Circuit) and “the record [is viewed] in the light most favorable to the verdict winner”.  The DC granted SJ to PUM regarding that claim because Google’s claim was time-barred under the discovery rule and “no reasonable juror could find that SRI was ‘blamelessly ignorant’” (and “that the injury was inherently unknowable”).  The FC panel agreed with the DC, noting that “[e]mployers do not need to track a former employee’s every movement for an indefinite period of time to look for potential claims, but there should be some basic level of diligence in looking after one’s interests.”  The FC panel also agreed with the DC’s decision “that the Delaware tolling statute [§ 8117]… did not toll the statute of limitations period”.  POM cross-appealed DC construction of the term “document” in the claims of the ‘040 and ‘276 patents, which the DC found not to be infringed by Google.  Google and the FC panel agreed the FC lacked jurisdiction under Article III as there was no “case” or “controversy” because, in part, “PUM in fact admitted…that modifying the claim construction has no effect on the outcome of this case” (arguing “the construction might be given preclusive effect in future litigation”).

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