by Dennis Crouch
A discussion of TriReme Medical v. AngioScore, Inc. (Fed. Cir. 2016)
Corporations must be getting somewhat annoyed with the antics of these pesky inventors. TriReme v. AngioScore centers on an inventorship dispute involving Dr. Chaim Lotan who was previously a paid consultant with AngioScore but who later sold his rights to a competitor TriReme. In the lawsuit, TriReme sued for correction-of-inventorship of three AngioScore patents that do not currently list Lotan as an inventor.
The Supreme Court has repeatedly announced that ownership of potential patent rights initially vest with the inventor(s). So far in our law, the set of potential “inventors” is limited to human persons (not corporate persons or machines or macaques). The initial right may, however, be transferred to through an assignment agreement.
In this case, the district court found that Lotan had assigned his rights to AngioScore and that his later purported assignment to TriReme actually transferred no rights. These two conclusions led to the final dismissal with a holding that TriReme had no standing to bring its claim.
On appeal, the Federal Circuit pulled-up the Consulting Agreement between Lotan and AngioScore that plainly indicates that Lotan “hereby assigns” all rights to his inventions, developments, and improvements made during the term of the Agreement. The problem with the agreement, however, was that Lotan had actually begun working prior to his signing of the agreement. In particular, he had run a full day test on the proposed angio-balloon, discovered a retention problem and recommended a solution. The later issued patents (that did not include Dr. Lotan’s name) did include an attachment structure similar to the one he had recommended.
The consulting agreement included a second provision that required Lotan to list all prior inventions relating to the work to be developed. Lotan did not include his suggested solution in that list. The district court held that Lotan’s failure to include the pre-agreement solution on the list resulted in an assignment of his rights to that solution to AngioScore – based upon an understanding of the “purpose” of the agreement.
On appeal, the Federal Circuit rejected that analysis. Applying California law, the court found that nothing in the contract purported to assign pre-agreement rights. Likewise, the Federal Circuit found no “estoppel-by-contract” since “neither Dr. Lotan nor his successor in interest (TriReme) seeks to enforce any rights under the contract.”
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The situation highlighted here regularly arises when a third-party is initially approached informally before being contracted-in. The solution to the problem is to add an ex post assignment of any pre-agreement innovations stemming from the informal work.
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The patents at issue include U.S. Patent Nos. 8,080,026; 8,454,636; and 8,721,667. To me it is somewhat interesting that one of the listed co-inventors (Eitan Konstantino) left AngioScore to found the competitor TriReme.