Patent Law

Assigned?

By Gary Odom and Jordan Kuhn

Jack Bennett sold some patents and continuations to Vector Corrosion Technologies for $25,000. He listed them. He left a CIP out, 6,217,742. A competitor, Euclid Chemical, sought declaratory judgment that Vector didn't own '742. Slapdash Ohio district court Judge Boyko ruled that the contract assigned the whole family to Vector. Euclid appealed. Another CAFC 2-1 split decision, with Judge Newman right on, and her colleagues laughable fools.

Euclid Chemical v. Vector Corrosion Technologies and David Whitmore (CAFC 2008-1170) precedential

Judge Linn, with Lourie tagging along, couldn't suss out basic contract law.

At bottom, we cannot give the Assignment a "definite legal meaning." Westfield, 797 N.E.2d at 1261. Under one reasonable interpretation, the Assignment includes the '742 patent, because it issued from a continuation-in-part of the '553 patent. But under another reasonable interpretation, the Assignment excludes the '742 patent, because it was an already issued patent, not an application, at the time of the assignment. We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law. See Potti, 938 F.2d at 647. Extrinsic evidence therefore should have been considered to ascertain the parties' intent. See Westfield, 797 N.E.2d at 1261.

Judge Newman, in dissent:

I agree that the district court erred in its grant of summary judgment, but I must, with all respect to my colleagues, dissent from their decision that the issue of contractual intent requires trial. The agreements transferring the Bennett patent property to Vector are clear that the only issued patent included in the transfer is U.S. Patent No. 6,033,553 ("the '553 patent"). The rules of contract and patent law do not permit the interpretation that another patent on a different invention, a patent fully known to Vector, was nonetheless silently conveyed by these agreements. Since as a matter of law only one conclusion is reasonable, there is no need for prolongation of this litigation with its costs, delays, and burdens on parties and courts.

There is accordingly no need for fact finding on the question of contractual intent, because the intent of the contracts is clear as a matter of law.

Applying the summary judgment standard of Anderson v. Liberty Lobby, 477 U.S. 242, 247 (1986), I would hold that the '742 patent was not assigned, for no reasonable jury could return a contrary verdict. I would not prolong this litigation.

Full post as published by The Patent Prospector on April 01, 2009 (boomark / email).