Docket No. 2015-1504
PROST, DYK, CHEN
February 5, 2016
Brief Summary: DC dismissal of TriReme’s suit for correction of ownership of patents AngioScore claims to own exclusively reversed and remanded for consideration of whether consultant invented subject matter that was assigned to AngioScore under consulting agreement.
Summary: TriReme appealed DC dismissal of its suit for correction of ownership of US 8,080; 8,454,636; and 8,721,667 (“AngioScore patents”) relating to angioplasty balloon catheters which AngioScore claims to own exclusively. TriReme argued it had received an assignment from Dr. Chaim Lotan and sought to have him added as an inventor. The DC dimissed the suit “for lack of subject matter jurisdiction, holding that any interest Dr. Lotan may have had in the AngioScore patents had been assigned earlier to AngioScore under a consulting agreement, and that TriReme as a consequence lacked standing.” The opinion explains that the AngioScore patents all relate to AngioScore’s AngioSculpt line of angioplasty balloon catheters and list three inventors (Dr. Eitan Konstantino, Tanhum Feld and Nimrod Tzori). Dr. Lotan signed any rights he had in the patents to TriReme in June 2014. If he was an inventor and TriReme acquired his interest, it “could practice the patents and would have a defense to infringement” (35 USC § 262; Shum, FC 2010). AngoiScore argued it had a Consulting Agreement with Dr. Lotan through which it had “acquired rights to all inventive work completed by” him. The FC reviews both the question of inventorship (Chou, FC 2001) and interpretation of the contract de novo (Intel, FC 1993). Section 9(a) of the Consulting Agreement (“CA”) required Dr. Lotan to list all of his “Prior Inventions” in Exhibit C (none were listed). Under Section 9(b) of the CA, Dr. Lotan “hereby assign[ed]” “all inventions. . . developments. . .improvements. . .conceive[d] or develop[ed] or reduce[d] to practice during the term of” the CA. AngioScore argued that before the CA effective date, Dr. Lotan recommended an attachment structure that was claimed in one of the AngioScore patents. AngioScore argued his failure to list it on Exhibit C “resulted in an assignment-not simply a license” (and the DC agreed) but the FC panel disagreed under California’s law that the CA be construed “according to the plain meaning of the language if possible” (“[w]hat § 9(a) does, at most, is grant AngioScore a non-exclusive license”). It also concluded “estoppel by contract” (i.e., TriReme was bound by Dr. Lotan’s representation that he had no prior inventions and therefore owned no rights in AngioScore’s prototype) did not apply. It did find, however, that whether Dr. Lotan’s “continued ‘talking’ with AngioScore” and performing work relating to designing, implementing, and analyzing clinical trials” “amounted to ‘developing,’ or ‘reducing to practice’ an ‘invention’” etc. under § 9(b) and would have been assigned to AngioScore was still an open issue (“a question of fact that cannot be resolved on a motion to dismiss”). Thus, the decision was reversed and remanded.