Tuesday, September 29, 2009

Do Assignments Require Express Language to Cover CIP Patents?

Gerber Scientific Int'l v. Satisloh AG, No. 3:07-CV-1382, (D. Conn., September 25, 2009, order) (P. Dorsey)

Gerber obtained patents via a broadly-worded assignment conveying all "rights, title and interest" in "the inventions covered thereby and any division reissues and extensions thereof." Notably absent from the assignment was the conveyance of continuation-in-part (CIP) patents and applications.

During litigation, Satisloh moved to dismiss the enforcement of a patent stemming from a CIP related to the previously-assigned patents, arguing that Gerber did not own the patent, and thus had no standing to bring suit. The district court initially dismissed Satisloh's motion. However, on further motion by Satisloh, the court amended the dismissal and certified the issue for interlocutory appeal for the Federal Circuit.

Although the entire ruling will be certified, the Court believes that the issue over which substantial grounds for disagreement exist is whether the Pilkington to Coburn Assignment included the continuation in part (“CIP”) which resulted in the ‘771 patent. The ruling held that although the assignment did not specifically use the term “continuation in part,” the CIP was included in the assignment. The assignment was broadly worded and specifically assigned all “rights, title and interest” in “the inventions covered thereby and any division, reissues, continuations and extensions thereof.”

However, Defendants convincingly argue that reasonable grounds exist for a difference of opinion. Although courts have found variously worded assignments to include CIPs, Defendants are correct that there is no binding precedent holding that an assignment with the exact terms cited above includes CIPs. Furthermore, a substantial ground for difference of opinion can be found even in Rowe Int’l Corp. v. Ecast, Inc., 500 F. Supp. 2d 887, on which the Court heavily relied. Although Rowe held that an assignment’s failure to use the “magic words” [CIP]” “is of no consequence,” the Rowe assignment specifically included “improvements.” Rowe, 500 F. Supp. at 891. The Pilkington to Coburn assignment, in contrast, did not mention “improvements” or use other language that referred specifically to CIPs.

[F]or the reasons stated above, Defendants’ Motion to Amend and Certify for Interlocutory Appeal is granted. All further proceedings in this case are stayed, pending resolution of the interlocutory appeal by the Court of Appeals for the Federal Circuit.

Read/download the order here (link)

Read/download Satisloh's brief for interlocutory appeal here (link)

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