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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial

By McKee, Voorhees & Sease, P.L.C.

In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information.  The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that purportedly assigned all inventions "which relate in any way to" the business of the employer.  The infringement defendant seized upon this, and obtained an assignment and retroactive license from the employer of any rights it had in the inventions, and then moved to dismiss the case after the close of discovery on the grounds that it was now properly a co-owner of the patent.  Jurisdiction therefore depended on whether or not the inventor or the employer owned the patents in question.  

The district court, after allowing extremely limited discovery on the issue, found that the employer owned an interest the patents and dismissed the case for lack of subject matter jurisdiction.  The Federal Circuit held that the district court had abused its discretion as further discovery was required to fully evaluate the ownership issue, and remanded the case for jurisdictional discovery.  However, the court held that because it characterized the issue as jurisdictional, there was no right to a jury trial on the issue.

Judge Newman dissented in part, finding errors in several aspects of the majority's reasoning, including the conclusion that no jury trial on the underlying jurisdictional issues was necessary, what law applied to whether the contract at issue produced a duty to assign or resulted in an automatic assignment, and the availability of equitable defenses.

More detail of DDB Techs., L.L.C. v. MLB Advanced Media, L.P. after the jump.

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Full post as published by FileWrapper on February 14, 2008 (boomark / email).