Ninth Circuit Applies Federal Circuit Law in Interpreting Contract to Assign Patent Rights

Los Angeles Biomedical Research Institute v. White (9th Cir. 2008)

The Federal Circuit has repeatedly held that contracts to assign patent rights should be interpreted under state law. In a recent opinion, the Ninth Circuit came to the opposite conclusion — holding that “patent law terms” in an employment contract should be interpreted according to to patent law principles.

Dr. White’s Patent & Copyright Agreement with LA Biomed read as follows:

I understand and agree that every possibly patentable device, process, or product hereinafter referred to as “invention”, which I conceive and/or reduce to practice while employed by the Institute, or during the course of my utilization of any Institute research facilities, shall be examined by the Institute to determine rights and equities therein in accordance with the Institute’s Patent and Copyright Policy.

It appeared that the jury interpreted the contractual term “conceive” as a solo activity, while patent law allows for joint conception. The appeal focused on whether the jury should have been informed of law of inventorship and conception as it relates to patent law.

On appeal, the 9th Circuit first agreed that California law requires agreements regarding patent rights be interpreted according to standard contract law and are not generally bound by the limits of patent law. In this case, however, the appellate panel found that the patent laws should be applied in this case when interpreting the contract language. This case may well be unique because the contract specifically noted that patent law principles “shall be taken into consideration.”

Consequently, the court held that the jury should have been properly informed of the law of conception — especially as it relates to joint inventorship.  “[W]e conclude that it was clear error for the district court … exclude the co-inventorship language.”


  • Read the decision [LINK].
  • Comment by Professor Mark Patterson: “The L.A. Biomed. case seems to me uncontroversial as a matter of contract law.  I would view it as saying that trade usage regarding patent law terms should be used to interpret contracts, just as trade usage is typically used in contract law.  And then the Federal Circuit’s decisions will be evidence of — indeed, an authoritative source of what is or will become — trade usage.  So I would say that the court is not so much applying Federal Circuit law directly as using it as evidence of trade usage.  I don’t anything in the opinion is inconsistent with that.”