Assigning Patent Rights

Euclid Chemical v. Vector Corrosion (Fed. Cir. 2009) 08-1170.pdf

The district court ruled that Vector was the owner of the ’742 patent based on an unambiguous assignment agreement from the inventor. On appeal, Euclid argued that the assignment was not valid and that – in fact – Euclid was the bona fide purchaser of the patent rights.

The December 2001 assignment to Vector purported to grant Vector all rights “to my US, Canadian, and European applications for patents and issued US patent” – specifically mentioning Patent No. 6,033,553 and “any and all divisional applications, continuations, and continuations in part … and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may by granted…”

By the time of the assignment, the ’742 patent had already issued as a continuation in part of the ’553 patent. The ’742 patent was not expressly mentioned in the assignment.

Judge Linn found the assignment ambiguous. On one hand it discusses the inventor’s “applications … and US patent” – indicated that only one patent was intended to be assigned. On the other hand, the ’742 patent was a continuation in part of the patent listed in the assignment. “We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law.” On remand, the district court should consider relevant extrinsic evidence to interpret the assignment.

In dissent, Judge Newman argued that the assignment clearly did not include the ’742 patent and thus that Vector did not own that patent.

Notes: This post was written using my new MacSpeech dictate software.

91 thoughts on “Assigning Patent Rights

  1. “A CIP by definition must be directed to a different invention.”

    Not so fast. There are several potential legal ambiguities that are not resolved by any such alleged definition.

    First, when I file an application, I might rightly or wrongly label it a CIP. That label typically will stick as far as the USPTO is involved, and will appear on the face of any patent that issues from that application, unless I (or less likely, the USPTO) take affirmative steps to change that label.

    Assuming that a patent (bearing on its face the CIP label in reference to that application) eventually issues, at least two scenarios are possible.

    a. Some or all of the valid claims presented in that patent do not find full 112 support in the parent application, making the originally-applied label an arguably correct descriptor, or stated differently, colloquially making the issued patent a “CIP” of its parent.

    b. All of its valid claims find full 112 support in the parent application, making the originally-applied label an incorrect descriptor, or stated differently, colloquially making the issued patent a “Continuation” or “CON” of its parent (or possibly even a “Divisional” if the issued claims were restricted out in the parent).

    Second, the term “invention” is perhaps one of the more abused and/or misunderstood in patent law. Consider the off-stated axiom “the claims define the invention”. Yet it takes multiple “independent and distinct” presented inventions to properly justify restriction, implying that inventions (plural) that are independent or distinct, but not “independent and distinct”, can be defined by the claims.

    Consider also that when some, but not all, claims are invalidated by prior art, at least those claims do not define “the invention”. In other words, we examine and analyze claims on a claim-by-claim basis.

    And because each claim can, and arguably must, establish patentability on its own merits (including avoiding 101 “same invention” double patenting) it thereby must define a different “invention” than its companion claims, implying that any patent that presents multiple claims presents multiple inventions.

    So the axiom is, at best, confusing, or possibly confused by other realities. Maybe it should read “each claim defines an invention” or “each claim must define a different invention” or “the claims define the inventions” or ?

    In any event, it seems we’ve got plenty of potential legal ambiguities here, even without considering the contract in dispute.

    Given those legal ambiguities, perhaps the horse is playing possum?

  2. >>In the end it seems rather blatant that the >>buyers were trying to buy the tech of adding >>those additives to pretty much any and all >>processes in this field, in so far at least as >>the seller party owned the rights therefor.

    Where does this come from? What seems blatant is that the contract didn’t include the ’742 and that they knew of the ’742 patent and that the language you are trying to hook the ’742 patent with was meant to hook a patent that might arise from application that they didn’t know about.

    Can you really say that you know so much about this technology that the claims are equivalent in the ’742 and the ’553 patent?

    Often there are large portfolios of patents and companies buy select ones of those patents. The patents may have minor differences, but the company only wants to practice that minor differece. And the owner of the portfolio would like to sell the other patents.

  3. “Do you figure she just made this up?”

    No, I figure she doesn’t understand is going on in the technology at hand. I.e. she thinks she is reading something that she isn’t. That’s the only reasonable explanation for her blunder. Otherwise she’s just incompetent. They aren’t mutually exclusive. If they were then she would have a basis for her position.

    “My comments assume that the inventor is a lay person (i.e., not knowledgeable of the law) who enters that contract without being represented by counsel.”

    Idk wcg, the guy at issue here is a seasoned veteran at least at inventing, business, and the actual performance of the jobs apparently. So much so that he’s a little bit well known in the field. It would stand to reason that this man knows something of the trade. Probably akin to what JAOI knows.

    In the end it seems rather blatant that the buyers were trying to buy the tech of adding those additives to pretty much any and all processes in this field, in so far at least as the seller party owned the rights therefor.

  4. You guys are really just way off base.

    Language to capture other issued patents would look very different.

    I have question: have any of you ever written a contract similar to this?

  5. 6,

    Very nice, even-tempered response.

    “I don’t know much of anything about how contract law would settle this matter, but it seems this statement alone should be enough of an admission that if it were me v you in court I should prevail.”

    You make a good point. If the two parties are both experienced professionals in the patent industry, then this extrinsic evidence would tilt in your favor. Please understand, however, that I will assume that the party to the assignment is not. My comments assume that the inventor is a lay person (i.e., not knowledgeable of the law) who enters that contract without being represented by counsel.

    In the end, the totality of the extrinsic evidence will determine who prevails. From what I heard in the oral argument, read from the opinion, and applying the common law principle that an ambiguous contract will be interpreted in favor of the non-drafting party, Euclid (appellant) will win and Vector (appellee) will lose.

    “Sorry man, I think you lose on this one. The guy has specifically cited issued patents that state unambiguously that they are a CIP of an x.”

    I disagree. He specifically cited “issued patent[]” in the singular. That is one reason why the majority found ambiguity. He cited a singular patent (and not the second existing patent) even though a second, previously-issued patent from a CIP application was in existence. This second patent was not specially cited.

  6. The invention of the ’742 patent is different from the invention of the ’553 patent. They are not exactly the same claims. They knew of the ’742 patent.

    All that language that you are trying to use to hook the ’742 patent is there to cover their bases for anything that might be in the patent office that they don’t know about. Consider that right before you sign the contract, you go and file a continuation that just doesn’t happen to be in the contract. Or consider that the inventor may have filed another application covering the same invention that you also don’t know about. That is what all that language is trying to cover.

    There is no ambiguity.

  7. Furthermore, a discrete/embedded anode is made of metal. What do you suppose a “metallized discrete/embedded anode” to be?

    “Just because the first claim does not include the word “metallized” before “discrete anode” in it doesn’t mean that the claim excludes metallized anodes, that specifically means that it INCLUDES THEM. How does Newman mess the basics up so often? I know examiners who can do better than this.”

    Pot/kettle

  8. 6, Newman’s position is based on “metallized” and “embedded” anodes being mutually exclusive:

    “It has long been known that metals such as zinc, when deployed in steel-reinforced concrete, can reduce corrosion of the steel by “galvanic cathodic protection.”1 Relevant to this dispute are two forms of this technology. In the first form, called “metallized” or “distributed” zinc anode technology, the zinc anode is distributed over the surface of the steel-reinforced concrete. This technology, as enhanced by use of lithium nitrate and lithium bromide, is the subject of the ’553 patent, issued on March 7, 2000 to Jack Bennett.
    The second form is called “embedded” or “discrete” zinc anode technology, wherein discrete anodes are embedded in the steel-reinforced concrete. This technology, with lithium nitrate and lithium bromide enhancement, is the subject of U.S. Patent No. 6,217,742 (“the ’742 patent”), issued on April 17, 2001 to Jack Bennett. The ’742 patent is identified as a continuation-in-part of the ’553 patent, and contains new matter describing and claiming the lithium-enhanced embedded zinc anode technology.”

    Do you figure she just made this up?

  9. [high five to 6]

    It’s okay, West Coast Guy. We’ll invite you to the next party but only if you promise not to wear that yellow cardigan.

  10. And after having taken the time to fully read the contract etc. the DC was right on point. This is unambiguously assigning the rights to Vector. This is an outrageous decision in that the CAFC didn’t unanimously affirm. I hope the DC sees that justice is done no matter which way this decision initially points them.

  11. “1. A method of cathodic protection of reinforced concrete comprising the steps of:

    (1) applying at least one discrete anode to said reinforced concrete;

    (2) embedding said discrete anode in a cementitous grout or mortar;

    (3) said cementitous grout or mortar having distributed therein a lithium salt selected from the group consisting of lithium nitrate, lithium bromide, and combinations thereof, in the amount of at least 0.2 gram (dry basis) per cubic centimeter of grout or mortar; and

    (4) causing or allowing current to flow between said anode and reinforcing steel such that the steel is cathodically protected.

    Look at that claim and tell me how it excludes metallized anodes. It doesn’t. Look at the other claims in that patent and tell me how they exclude metallized anodes. They don’t.

    From J newman herself: “The ’742 patent excludes metallized zinc anodes from the scope of its claims.”

    That statement is false. The whole of her position rests thereon. The whole of her position falls. Goodbye to Newman’s position.

    /bow /bow all in a days work. Why does Newman have such a hard time seeing the blatant?

    See here the first claim in the other patent:

    ” 1. A method of cathodic protection of reinforced concrete having reinforcement comprising the steps of:

    (a) thermally applying a sacrificial conductive metal onto an exposed surface of the reinforced concrete in an amount effective to form a sacrificial or impressed current anode on such surface, wherein said conductive metal anode after thermal application is permeable, said conductive metal anode being bonded to the concrete surface and having an interface with the concrete surface;

    (b) electrically connecting said anode to said reinforcement;

    (c) applying onto the exposed surface of said conductive metal anode a lithium salt in liquid form, said lithium salt being selected from the group consisting of lithium bromide, lithium nitrate, and combinations thereof; and

    (d) allowing said liquid lithium salt to migrate through the pores of said conductive metal anode to said anode and concrete interface, said salt at said interface increasing the current delivery from said anode at said interface.

    Do you notice how both of the patents cover the invention as defined by the agreement?

    “the specific use of LiNO3 and LiBr to enhance the performance of metallized zinc anodes.”

    Just because the first claim does not include the word “metallized” before “discrete anode” in it doesn’t mean that the claim excludes metallized anodes, that specifically means that it INCLUDES THEM. How does Newman mess the basics up so often? I know examiners who can do better than this.

    I should add that, before you go there, just because there are two types of tech here that are widely recognized as being either “discrete anodization” or “metallized anodization” does not mean that one cannot use both and that the first claim does in fact cover metallized discrete anodization.

    Yes, I love when technological reality trumps legal nicity because I win like 95%+ of the time. And that’s not an exaggeration.

  12. Don’t you just love it when technological reality turns out to be more important than legal nicety?

  13. like I said: the issue is not CIP patents or apps, it’s metallized versus embedded anodes…

  14. “”Any brief statement stating that the “patent” is a “CIP” is colloquial shorthand referencing the underlying applications, is made in the context of the application’s linage, and is understood to mean the patent issued from a CIP application.”

    I don’t know much of anything about how contract law would settle this matter, but it seems this statement alone should be enough of an admission that if it were me v you in court I should prevail. Blatantly the same colloquial shorthand was being used in the contract, it is apparent on its face, and by your own admission up thread, that the boilerplate addon to the contract was an attempt to capture things that came after those apps.

    “It’s too bad the court (including Pauline) didn’t make take the time to interpret or explain the meaning of the information provided in the “Related U.S. Application Data” field on the face of the patent.”

    I have yet to hear them do so. These cases are but a few of many, and as MM has stated, people in patents routinely refer to issued patents as CIP’s, DIV’s, etc. ”

    The comments about how J Newman’s dissent is not over this issue but over the issue of what subject matter the assignment covers I would believe.

    “But there is no way that the PTO issues per se CIP patents, continuation patents, and divisonal patents. There are not separate creatures for patents. It is one patent which may issue from one of three forms of established applications. The colloquial shorthand of CIP patent, continuation patent, and divisional patent is just that — colloquialism. The usage of CIP patent, continuation patent, and divisional patent as evolved into an informal understanding that a patent has been issued from a specific type of formal application.”

    Sorry man, I think you lose on this one. The guy has specifically cited issued patents that state unambiguously that they are a CIP of an x.

    Also, I think you lose the war even with respect to the issues Newman brings up, just as CPC says. None the less good thread.

  15. Let’s try that second to the last line again.

    I’m not getting hung up with including “CIP [patent]” in the construction of “CIP.”

  16. CPC,

    “On Page 6, lines 4-7 Newman states that the “CIP” language in the agreement is directed to the “same invention” language in the agreement.”

    She specifically excludes the patent flowing from the CIP application:

    “The ’742 patent [issued from a CIP] is not for ‘said invention.’”

    Hence, she recognizes the invention issued from the CIP application has been directed to a different invention just as you say CIPs should. Moreover, any reissue of this specific patent will not be covered because it is not part of said invention.

    I’m sorry, but if there is an inconsistency, you haven’t shown it.

    Referring back to your post of yesterday, I believe your hung up with your interpretation of CIP [patent]. She doesn’t. She recognizes that CIP as an application, that the CIP ceased upon issue, and the issued invention from that application as a separate invention excluded from the assignment and/or reissue of said invention.

    I’m not getting hung up with including in the “CIP” language a “CIP [patent]” with the .

    Send this to the glue factory.

  17. West,

    On Page 6, lines 4-7 Newman states that the “CIP” language in the agreement is directed to the “same invention” language in the agreement. This reading of the agrrement is only used to justify the conclusion. A CIP by definition must be directed to a different invention. The “same invention” language modifies reissue patents which can claim the same invention.

    This horse is dead so I will stop beating it.

  18. Hi West Coast Guy,

    I agree; I believe anyone who reads Judge Newman’s Opinion and the assignment will concur with her view.

    Excerpt, page 5:
    “Although my colleagues, in an abundance of caution, remand for trial of contractual intent, it is quite clear that the only reasonable construction of these agreements is that they assigned the specifically listed ’553 patent and four applications directed to metallized anode technology, and continuing or reissue applications and patents “for said invention,” but did not assign the previously issued yet unlisted ’742 patent for a different invention.”

  19. >>If (as Newman claims) the assignment >>is “clear,” then it’s also “clear” that if the >>CIP had been reissued after the assignment was >>executed then it would fall within the scope >>of the assignment. And that is, shall we say, >>a bit messed up.

    That is not messed up. That prevents the seller from submitting the unassigned patent to reissue. The point is that you figure out what the patents cover in due diligence and then you buy the ones you want, and then write the type of language this person wrote that covers everything else so they don’t have an application that you don’t know about or so that they don’t take a patent you didn’t buy and put it into reissue and get different claims that you may infringe. (and then sell that reissue to someone else.)

  20. CPC,

    “Further, Newman says that the reference to CIP’s is directed to the same invention.”

    Where in the opinion? On page 5 of her dissent, she states that the

    “unlisted ’742 patent [issued from a CIP is] for a different invention”

    I still don’t see here inconsistency?

  21. CPC – OK, I see your point, but Newman’s point is that the ’742 patent is for a different invention relating to subject matter that is positively excluded from the assignment: embedded anodes v. metallized anodes.

  22. West Coast Guy “As I’ve stated above, the term CIP is used as colloquial shorthand. Although I might use it colloquially, I nevertheless don’t lose ”

    ***yawn***

    I don’t believe you’re from the West Coast. Nobody on the West Coast has a sphincter as tight as yours.

    You’ve been moving the goalpost the entire thread. My point stands: the assignment language is not “clear”. If (as Newman claims) the assignment is “clear,” then it’s also “clear” that if the CIP had been reissued after the assignment was executed then it would fall within the scope of the assignment. And that is, shall we say, a bit messed up. And of course the point about the two patents “relating to different inventions” is a red herring, for the reasons provided by commenters above.

  23. West, yes your re-write would exclude the issued CIP patent.

    ThisMortalCoil, that is my point. Newman cites the agreement as being limited to “continuation or reissue applications and patents “for said invention,” but did not assign the previously issued yet unlisted ’742 patent for a different invention.” Further, Newman says that the reference to CIP’s is directed to the same invention. Therefore, according to Newman, because the issued CIP is to a different invention it is not part of the agreement. But all CIP are to a different invention! If it was to the same invention it could not be a CIP but a reissue. I note that the “for the same invention” language is 47 words behind the CIP language in the agreement. For Newman to say that the same invention modifies CIP is clearly stretching.

  24. CPC – I don’t understand: Newman makes the point several times that the two patents relate to different inventions.

  25. CPC,

    “So to use that language to limit the agreement appears wrong.”

    Would it appear wrong if you read the phrase “any and all divisional applications, continuations [applications], and continuations in part [applications]“? This would be limiting because it would exclude the patent issued from the CIP application, wouldn’t it?

  26. West Coast Guy,

    I already knew your answer.

    You asked for autority of calling a patent CIP and I cited you issued patents. If it is good enough for you to cite as authority then it should be good enough for me.

    I generally like Newman’s thinking, but all the reference to the same invention is a bit odd. No two patents claim the same invention, except possibly a reissue. So by definition the CIP’s could not be to the same invention. So to use that language to limit the agreement appears wrong.

  27. For sure you can construct a plausible argument that the term CIP cannot, strictly speaking, refer to an issued patent. But equally surely, you can argue that normal usage of “CIP” includes a patent issued on a CIP application. That’s the source of the ambiguity that led the majority to vacate and remand, and it that’s all there was to it then I would tend to agree there is an ambiguity that requires extrinsic evidence to resolve. Hoever, I think Newman’s point about metallized versus embedded is enough to tip the balance, along with the fact that Vector knew about the ’742 patent months before the assignment was executed.

  28. Dear ThisMortalCoil,

    Yes, yes: I see it so now; it is clearly not ambiguous.

    Thanks for your clarification.

  29. CPC,

    “It is rare, but I agree with Mooney on this one.”

    Like I said above, I now understand the source of his confusion.

    But there is no way that the PTO issues per se CIP patents, continuation patents, and divisonal patents. There are not separate creatures for patents. It is one patent which may issue from one of three forms of established applications. The colloquial shorthand of CIP patent, continuation patent, and divisional patent is just that — colloquialism. The usage of CIP patent, continuation patent, and divisional patent as evolved into an informal understanding that a patent has been issued from a specific type of formal application.

  30. 6: “Wait wait wait, isn’t the only real question here whether a CIP application stops being called a CIP upon issue of a patent therefor? Isn’t this a well settled “no”?”

    For once, I actually agree with 6 about something.

  31. CPC,

    “As you noted “[t]his application is a continuation-in-part” is listed on the patent, but the PTO does not issue applications it issues patents! So is the PTO equating patents with applications?”

    To your statement, I agree that the PTO does not issue applications and have previously stated so above.

    To your question, not at all. There is no equating patents with applications. I have previously stated so above. The “Parent Case Text” listing of the patent provides a summary of application lineage and is not equating patents with applications. Note the title: “Parent Case Text” is descriptive of providing lineage information from a family of applications.

  32. JAOI

    “It’s ambiguously clear” is oxymoronic

    “It’s clearly ambiguous” is not.

    See also: “It’s inventively obvious” versus “It’s obviously inventive”.

  33. With respect, I think you’re all missing the point.

    In the words of Judge Newman herself:

    “The ’742 patent is identified as a continuation-in-part of the ’553 patent, and contains new matter describing and claiming the lithium-enhanced embedded zinc anode technology.”

    She also says:
    “The ’742 patent excludes metallized zinc anodes from the scope of its claims.”

    The significance of this is that the assignment says:
    “This patent claims the specific use of LiNO3 and LiBr to enhance the performance of metallized zinc anodes”.

    It is the distinction between “metallized” and “embedded” zinc anodes that is the basis of Judge Newman’s dissent, not whether an issued patent can or cannot be described as a CIP. On the face of it, I tend to agree with her.

    No sensible attorney would rely on “any and all divisionals…” to capture applications, much less granted patents, that were extant and known at the time of an assignment. The main purpose of such language is to capture divisionals etc. that haven’t even been filed yet, plus anything extant that wasn’t actually known about.

  34. West Coast Guy,

    I am not Mooney. By refusing to look at the term CIP as more than an application you are blinded. As you noted “[t]his application is a continuation-in-part” is listed on the patent, but the PTO does not issue applications it issues patents! So is the PTO equating patents with applications? There are 442 patents which state “This patent is a Continuation-in-Part …”, See for example 7,523,954.

    I agree that the document could have been drafted in a better way and that the patent(CIP) was not intended to be assigned. But the agreement is broad enough to capture it.

    It is rare, but I agree with Mooney on this one.

  35. Dear GP,

    Re:
    “It’s clear it’s ambiguous!”

    Wow, what a great oxymoronic sentence!, or is it?

    Merriam Webster says:
    “…a combination of contradictory or incongruous words (as cruel kindness)”

  36. Paul F. Morgan–

    “…ask yourself how much expensive legal reviewing do you think a mere $25,000. assignment [that's precisely what it says] would normally get in YOUR firm or company?”

    I would definitely review it immediately before execution by or on behalf of my client, because it reflects a fluid situation wherein the character of the subject of the contract could change significantly.

    Moreover, such review is relatively quick and cheap.

    It will be interesting to see if it WAS reviewed immediately prior to execution, and the conversion of app to patent WAS recognized, but believed to have been within the scope of the agreement, and if so, why.

  37. Paul F. Morgan,

    “If some of the above are seriously arguing that the term “CIP” is NOT widely and generally used by patent attorneys to describe EITHER CIP applications or their issued patents, I must have been practicing patent law on a virtual planet for 44 years, instead of in the real world, without realizing it.”

    As I’ve stated above, the term CIP is used as colloquial shorthand.

    Although I might use it colloquially, I nevertheless don’t lose sight of the fact that it is colloquialism, nor do I lose sight of the fact that the PTO does not issue separate patents entitled “CIP patent,” “continuation patent,” and “divisional patent.” Instead, the PTO issue a “patent” of one form from these three forms of applications.

  38. Well, I don’t see the ambiguity. I see a patent with no “s” at the end and then a bunch of language that is meant to cover everything that might be in patent offices around the world.

  39. Malcolm Mooney and Mooney Defender,

    With the Endo and Motionless Keyboard cases that you have cited, I understand your confusion. Moreover, I now understand the source of the “ambiguity.”

    When the court in Endo and Motionless Keyboard makes such statements, it is providing background and summary information by citing from the face of the patent the data field entitled “Related U.S. Application Data.” Any brief statement stating that the “patent” is a “CIP” is colloquial shorthand referencing the underlying applications, is made in the context of the application’s linage, and is understood to mean the patent issued from a CIP application.

    It’s too bad the court (including Pauline) didn’t make take the time to interpret or explain the meaning of the information provided in the “Related U.S. Application Data” field on the face of the patent.

  40. “This post was written using my new MacSpeech dictate software”

    Who cares?

    This response was written using my keyboard and my brain.

  41. I worked on a case just like this. Multiple issued patents from the same application including CIPs. Our client purchased the rights to some of the issued patents and everything else that would issue. This is common as you then know what the claim scope is of the issued patents and then you are protecting yourself from the claim scope of anything that might issue including re-issue. So, you don’t buy all the patents, but if they try to get a re-issue, then you own that too.

    The seller has their reasons for wanting to keep some of the patents.

    Sorry, but if you read the contract which is in the opinion, I think there is no ambiguity that rises to the level of going to the extrinsic evidence.

    They should have put in all issued patents if that was the intent.

  42. If some of the above are seriously arguing that the term “CIP” is NOT widely and generally used by patent attorneys to describe EITHER CIP applications or their issued patents, I must have been practicing patent law on a virtual planet for 44 years, instead of in the real world, without realizing it.
    Let’s hope the district court this case was bounced back to will do a thorough job.

  43. I think it’s pretty clear whoever drafted this forget to put in other patents that may claim the said invention. They were only thinking of what might be in the patent office and not seen. The problem when you buy patents is that you are not sure if they have some other application in the patent office that you can’t see and that they aren’t telling you about.

    So, I think Newman is right. They should have added issued patents. They didn’t. It is clear in the four corners, so you don’t need to look at the extrinsic evidence, which is the difference between claim construction and contract law.

  44. no longer on west coast,

    “Would you please provide your suggested wording of this assignment clause so we could understand how you would include a cip application which turned out to be granted as a patent just before the assignment was executed.”

    Something like this…

    Any and all divisional applications, continuations applications, and continuations in part applications … and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may by granted[.]”

    I would include language mentioning the existance of the ’742 patent and specifically excluding it from the assignment.

  45. “any and all divisional applications, continuations, and continuations in part together with the entire right, title and interest in and to **said applications**”

    Doesn’t that language suggest that the terms divisional, continuations, and continuations in part refers applications and not to issued patents?

  46. HI West Coast Guy!
    Would you please provide your suggested wording of this assignment clause so we could understand how you would include a cip application which turned out to be granted as a patent just before the assignment was executed.This may help to share your opinion;thanks

  47. Malcolm Mooney,

    From the PTO website of the ’742 patent under “Parent Case Text”:

    “This application is a continuation-in-part of prior application Ser. No. 09/236,731 filed Jan. 25, 1999, now U.S. Pat. No. 6,033,553 which in turn was a continuation-in-part of parent application Ser. No. 08/731,248 filed Oct. 11, 1996 now abandoned and Ser. No. 08/839,292 filed Apr. 17, 1997, pending.”

    The “CIP” refers to the application and not the patent.

  48. Malcolm Mooney,

    “That’s nice. Nevertheless, clients and patent attorneys refer to patents as “divisionals” and “continuations” and CIPs every day because it saves time.”

    You’re missing the point and going way off track of the issue here.

    To summarize your position, your argue the following:

    The assignment agreement states:
    1. divisional applications, 2. continuations (to include “continuation patents”), and 3. continuations in part (to include “CIP pantents”).

    In support of your position, you want to introduce evidence of colloquial exchanges between patent attorneys and judges to convince the judge to use your interpretation of the assignment language. To do this, however, is to resort to using extrinsic evidence to determine intent. Moreover, you seek to have the court enforce the assignment according to your position.

    Unfortunately, the court won’t get to your extrinsic evidence because what you seek to have the court to enforce is a legal impossibility. You have agreed with me by recognizing the legal impossibility by saying “that’s nice” and revert back to the colloquial exchanges that shorten terminology.

    To put it another way, you wish to have the court enforce a provision which, if interpreted using your interpration, will result with enforcing a unlawful provision. The court will not do that.

  49. Thanks, MD. It seemed to me like it would be an annoying search because you’d have to sift through the non-relevant hits.

    How long did it take you to find those?

  50. “These are legally impossibilities.”

    That’s nice. Nevertheless, clients and patent attorneys refer to patents as “divisionals” and “continuations” and CIPs every day because it saves time.

    Go ahead and pretend otherwise. I don’t care.

  51. West Coast Guy:

    “Provide one CAFC opinion or MPEP section, please, that does not make the distinction between the application and patent.”

    Here are some:

    Purdue v. Endo (Case No. 04-1189): “The patents are related: U.S. Patents No. 5,656,295 the “’295 patent”) and No. 5,508,042 (the “’042 patent”) are, respectively, a continuation-in-part and a divisional of U.S. Patent No. 5,549,912 (the “’912 patent”). The ’912 patent itself is a continuation-in-part of U.S. Patent No. 5,266,331 (the “’331 patent”), which Purdue has not asserted against Endo.”

    MOTIONLESS KEYBOARD v. MICROSOFT (Case No. 2005-1497): “The ’322 patent, entitled “Ergonomic Thumb-Actuable Keyboard for Hand-Grippable Device,” issued as a continuation

  52. Malcolm Mooney,

    Provide one CAFC opinion or MPEP section, please, that does not make the distinction between the application and patent.

  53. “Likewise, if I assign to you “all inventions disclosed in an application, and any and every patent, continuation, continuation-in-part or divisional patent or application claiming priority thereto”, only a lawyer could pretend that what is covered is ambiguous.”

    Malcolm, your statement is per se ambiguous. There is no such legally-recognized definition of a continuation, CIP, or division patent. These are legally impossibilities. Of course, the challenge for you to present an official or authoritative reference is still available if you dare to accept?

    It is understood in the MPEP that a patent may issue from a divisional application, continuation application, and CIP application. However, from my readings of the case law, the CAFC is always careful in making the distinction between the application and the patent issued therefrom. Perhaps you could follow the court’s practice?

  54. Malcolm Mooney,

    “Attorneys and judges refer to patents that issued from CIP applications as “CIPs” all the time”

    Note: official or authoritative reference source. Care to cite an official or authoritative reference source (and please avoid using “crap” if possible?

    Thanks, Malcolm.

  55. “I know of no official or authoritative reference source which uses CIP as a descriptor of a issued patent.”

    Give me a fracking break. Attorneys and judges refer to patents that issued from CIP applications as “CIPs” all the time, and there is absolutely no confusion about what is being referred to. Likewise, if I assign to you “all inventions disclosed in an application, and any and every patent, continuation, continuation-in-part or divisional patent or application claiming priority thereto”, only a lawyer could pretend that what is covered is ambiguous.

  56. 6,

    “Then why in the heck didn’t the CAFC simply rule on that instead of waffling?”

    Also, it’s easier to throw it back down to the lower court and let it sort it out. Moreover, they probably wanted to avoid tackling Ohio state law.

  57. 6,

    “Then why in the heck didn’t the CAFC simply rule on that instead of waffling?”

    Here’s one answer…the one party had good lawyers creating ambiguity. Pauline, however, saw right through their creative arguing.

    “I could swear that when judges refer to patents that are CIP’s of other patents then that was what they called them in every single instance”

    There’s an understood “application” when referring to a CIP. It is well-understood that CIP is both a stand-alone noun synonymous with a CIP application and phrase used as an adjective describing one type of application.

  58. “Yes.”

    Then why in the heck didn’t the CAFC simply rule on that instead of waffling?

    “Could you point in the MPEP or any other reference where the CIP is used as an adjective (adjective phrase) to describe a patent. ”

    Off hand no I cannot, but I could swear that when judges refer to patents that are CIP’s of other patents then that was what they called them in every single instance and I’ve read a few cases concerning CIP’s though I don’t think I’ve faved any of them.

  59. 6,

    “isn’t the only real question here whether a CIP application stops being called a CIP upon issue of a patent therefor?”

    Yes.

    “Isn’t this a well settled “no”?”

    How? Could you point in the MPEP or any other reference where the CIP is used as an adjective (adjective phrase) to describe a patent. It is well-settled that a patent can issue from a CIP application, but I know of no official or authoritative reference source which uses CIP as a descriptor of a issued patent.

    As far as I know, the PTO describes the CIP as an application from which a patent can issue.

  60. This is hilarious, apparently Euclid, and the Fed circ. believe that there is a chance that someone can file an application at the USPTO, have it issue, sell the rights to the application, and then keep the patent.

    HILARIOUS. I love it. It could be a new paradigm of legal “fraud”!

  61. “Anybody else notice how the problems with contract interpretation so closely parallel those of claim construction?”

    Yes, indeed. Moreover, I suspect that claims construction borrowed on common law contract interpretation principles.

    “But does Judge Newman usually go for the plain meaning when it’s a claim construction issue?”

    Not really, because she sticks to Philips and looks to the intrinsic evidence (specification, other claims, file history, etc…). To venture into the “plain meaning” would mean going into the never-never land of extrinsic evidence when viewed through the patent lens.

    Other the other hand, if the patentee acting as his/her own lexicographer is understood to provide the “plain meaning” of the word, then she will usually follow it.

  62. Wait wait wait, isn’t the only real question here whether a CIP application stops being called a CIP upon issue of a patent therefor? Isn’t this a well settled “no”?

  63. Anybody else notice how the problems with contract interpretation so closely parallel those of claim construction?

    But does Judge Newman usually go for the plain meaning when it’s a claim construction issue?

    Genuinely curious to know whether anybody has noticed one way or the other.

  64. GP,

    “A continuation-in-part is a continuation-in-part is a continuation-in-part. The patent of interest [is] a CIP, so it’s included.”

    No, the patent of interest is not a CIP. It used to be a CIP application, but ceased being one once the patent had issued. At the time the patent was issued, it lost its status as a CIP application. At the time when the assignment was signed, it was no longer a CIP [and not subject to the applications clause].

  65. CPC,

    “The CIP language captures the issued CIP because it was not limited to CIP applications.”

    What “issued CIP”? The PTO doesn’t issue CIPs. The PTO issues patents, and issues application numbers for CIPs, but the applicant files CIPs. Your attempt to use the CIP as a patent creates a legally impossibility because CIPs aren’t issued.

    Nice try, Malcolm.

  66. Before a lot of heavy Monday morning quarterbacking on an undoubtedly unintended ambiguity visible only in hindsight, and due to one issue date, first ask yourself how much expensive legal reviewing do you think a mere $25,000. assignment [that's precisely what it says] would normally get in YOUR firm or company? Most of us are just lucky that contractual boilerplate like this rarely ever becomes relevant enough to get legally challenged.

  67. “The CIP language captures the issued CIP because it was not limited to CIP applications. ”

    That’s what I thought on first glance, but I haven’t read the whole opinion nor looked at all the facts. Seems like a clear cut case for the DC to have ruled as it did.

    Let’s presume though that LB above is right and that all the nums were specified and they were making a reasonable attempt to capture all of the children. Let’s also presume that the seller pulled one over on the buyer by filing more children without telling them about the children. Would this not be an instance for equitable considerations? And thus the seller be forced to sell the remaining children on the cheap or forced to give them to the buyer? I have little understanding if it would or not because I have little exposure to equitable considerations.

    Overall though it seems to me like there is a better way to capture children than that.

  68. I love this kind of case because it brings lawyers out of the wood work to have bare-fist death matches over what the words “to be” or “any” mean.

    You’re all missing the issue. The issue isn’t what side you fall on. The issue is whether you believe it’s clear or not clear.

    Me? I say, “not clear.” Sure, I could say I fall one way or the other, but I would not say it’s a slam dunk either way.

    So this is a simple and easy case. Bring in the extrinsic evidence and hack it out. That’s the whole point of this case -

    it’s not – is the XYZ patent included in the assignment.

    it’s – is the assignment unambiguous.

    It’s not. If I can reasonably argue both sides, it’s not clear.

    1. A continuation-in-part is a continuation-in-part is a continuation-in-part. The patent of interest in a CIP, so it’s included.

    2. The patent of interest was not listed, the assignment specifically calls out a single patent, and, given that the patent of interest had issued before the assignment was executed, no dice.

    It’s clear it’s ambiguous!

    Remand is the right call.

    Newman is a strange duck to want to finalize the opinion without the extrinsic evidence being vetted in front of a court.

  69. I love this kind of case because it brings lawyers out of the wood work to have bare-fist death matches over what the words “to be” or “any” mean.

    You’re all missing the issue. The issue isn’t what side you fall on. The issue is whether you believe it’s clear or not clear.

    Me? I say, “not clear.” Sure, I could say I fall one way or the other, but I would not say it’s a slam dunk either way.

    So this is a simple and easy case. Bring in the extrinsic evidence and hack it out. That’s the whole point of this case -

    it’s not – is the XYZ patent included in the assignment.

    it’s – is the assignment unambiguous.

    It’s not. If I can reasonably argue both sides, it’s not clear.

    1. A continuation-in-part is a continuation-in-part is a continuation-in-part. The patent of interest in a CIP, so it’s included.

    2. The patent of interest was not listed, the assignment specifically calls out a single patent, and, given that the patent of interest had issued before the assignment was executed, no dice.

    It’s clear it’s ambiguous!

    Remand is the right call.

    Newman is an idiot to want to finalize the opinion without the extrinsic evidence being vetted in front of a court.

  70. The assignment agreement states:
    1. divisional applications, 2. continuations (not limited to applications), and 3. continuations in part (not limited to applications.

    The CIP language captures the issued CIP because it was not limited to CIP applications.

  71. “‘In dissent, Judge Newman argued that the assignment clearly did not include the ’742 patent’ … I have to believe Newman is the only person on earth without an interest in the patent who could have come to that conclusion.”

    Did you actually read the opinion, Malcolm? Based on that, I’ve come to the same conclusion. For the record, I have no interest in the patent, and I’m on earth. Judge Newman may have been slightly premature from a procedural point of view, but it appears to me that it will be awfully hard to rebut the contract-based evidence that the ’742 patent, which as Judge Newman pointed out was directed to a different invention than that covered by the specifically listed patent and applications, was NOT intended to be transferred.

  72. Malcolm Mooney,

    I might be able to accept your argument if you could tell how patent can revert to a CIP, i.e, be re-characterized from “patent” to “CIP” application.

  73. 6,

    “I’m surprised that anyone would buy a portfolio without having all the numbers laid out specifically in writing. I mean seriously, mcdonalds can write me a nice list of the things I buy, but a person selling me patent rights cannot?”

    So true.

  74. “I’m surprised that anyone would buy a portfolio without having all the numbers laid out specifically in writing.”

    Actually, the assignment and the related contracts did lay out “all the numbers” in writing. The confusion was caused by the semi-boilerplate that was added to the end of that list in a quite reasonable attempt to capture pending or future children of the listed patents and applications.

  75. “it’s “clear” that if the ’742 had been reissued it would have been encompassed by this assignment.”

    Nope. Due to the lack of an antecedent basis, it’s “clear” that if the ’742 had been reissued it would have NOT been encompassed by this assignment.

    Had the ’742 patent been issued AFTER the assignment and NOT BEFORE, then you would be correct, Malcolm, because there would be an antecedent basis because the character of the CIP would not have changed to the character of a patent.

  76. Malcolm Mooney,

    “The assignment says “any and all … continuations in part … and any and all Letters Patent which MAY … BE reissued for said invention” so it’s “clear” that if the ’742 had been reissued it would have been encompassed by this assignment.”

    The inventions “said” of “said inventions” do not include “saying” the ’742 patent. The ’742 patent was a patent on the date signed and not an application, so it could not have been characterized as a CIP, divisional, or continuation on that date. These are the antecedent bases for “said” invention. Being a patent and not application, there is no antecedent basis for including the ’742 patent.

  77. I’m surprised that anyone would buy a portfolio without having all the numbers laid out specifically in writing. I mean seriously, mcdonalds can write me a nice list of the things I buy, but a person selling me patent rights cannot?

  78. The assignment says “any and all … continuations in part … and any and all Letters Patent which MAY … BE reissued for said invention” so it’s “clear” that if the ’742 had been reissued it would have been encompassed by this assignment.

    But the CIP itself? That’s “clearly” not within the scope of the assignment. According to Newman. Dissenting. Again.

  79. “So if the CIP happened to be reissued after the contract was exected, then it would “clearly” have been assigned.”

    First, I don’t think there is a direct link between a CIP and reissue application. There is a link between CIP and patent, and there is a link between patent and reissue application.

    Second, the applications stated in the assignment are divisionals, continuations, and CIPs — not reissues. In fact, now that you have brought it up, the absence of mentioning a reissue application bolsters Pauline’s position and further solidify the exclusion of the ’742 patent.

    Third, there is no controversy regarding a reissue patent, so is a discussion over a non-issue really needed, Malcolm?

  80. So if the CIP happened to be reissued after the contract was exected, then it would “clearly” have been assigned.

    Right.

  81. Hindsight is 20/20.

    Note to drafters of assignments: This controversy could have been avoided by specifically excluding related patents and/or applications that existed at the time.

  82. Pauline is right, and the majority does not disagree with her interpretation. The majority has only acted out of an abundance of caution in the reversal of the summary judgment.

    Although ’742 patent was issued from a CIP of the ’553 patent, it was no longer an “application” when the assignment was signed.

    The language of the assignment stated, in part, “any and all divisional applications, continuations, and continuations in part … and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may by granted[.]” The CIP which issued as the ’553 patent months beforehand was no longer a CIP on the date the contract was executed.

  83. “Notes: This post was written using my new MacSpeech dictate software.”

    The major problem in Speech Recognition is: “How to Wreck a Nice Beach.”

  84. Dennis: “This post was written using my new MacSpeech dictate software.”

    Cool. The money question: how much grammar and punctuation editing did you need to do “by hand” to get it finalized?

  85. “In dissent, Judge Newman argued that the assignment clearly did not include the ’742 patent”

    I have to believe Newman is the only person on earth without an interest in the patent who could have come to that conclusion.

  86. “Notes: This post was written using my new MacSpeech dictate software.”

    Because this post was generated by a computer, you are not entitled to any copyright in it, as you are not an “Author” as used in the Constitution’s IP clause.

    -Malcolm Mooney parrot

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