Supreme Court: Inventors Can Retain Rights Even for Federally Funded Inventions

StanfordImageStanford v. Roche, 563 U. S. ____ (2011)

In a 7-2 decision, the Supreme Court has ruled that a federally funded contractor does not necessarily own the patent rights to inventions resulting from funded projects. Here, the Board of Trustees of the Leland Stanford Junior University unsuccessfully argued that such rights automatically vest under the Bayh-Dole Act of 1980.

Ownership of patent rights and inchoate pre-filing rights are somewhat confusing because they involve a mixture of federal patent law and state laws of contracts, employment, and trade secrets. Here, the majority led by Chief Justice Roberts has held that US patent rights have always (since 1790) initially vested in “the inventor” and that the non-specific language of the Bayh-Dole Act does nothing to change the original setup.

The Bayh-Dole Act has revolutionized the way that universities look at technology and innovation by allowing research institutions to “elect to retain title” to inventions generated through federal funding. 35 U.S.C. § 202(a). Today, most major research universities hold dozens if not hundreds of patents and have extensive licensing offices. The Association of University Technology Managers (AUTM) now boasts more than 3,500 members.

This case involves a Stanford researcher (Mark Holodniy) who was under a prior contractual duty to assign invention rights to Stanford but who actually assigned rights to Cetus. When Stanford sued Roche (Cetus’ successor in interest) for patent infringement, Roche’s defense was that a co-owner could not be held liable for patent infringement. The Court of Appeals for the Federal Circuit agreed with Roche — holding that Holodniy’s duty to assign rights to Stanford did not block him from actually assigning rights to Cetus and that Roche therefore held rights in the invention.

At the Supreme Court, Stanford argued that the contractual rights did not matter and instead that its statutory right to “elect to retain title. . . any invention of the contractor” conceived or reduced to practice under a federally funded agreement gave it precedence over Cetus/Roche. The court rejected Stanford’s argument as both against the tradition of patent law and not in accord with the statute.

Stanford’s reading of [the Statute] is plausible enough in the abstract; it is often the case that whatever an employee produces in the course of his employment belongs to his employer. No one would claim that an autoworker who builds a car while working in a factory owns that car. But, as noted, patent law has always been different: We have rejected the idea that mere employment is sufficient to vest title to an employee’s invention in the employer. Against this background, a contractor’s invention—an “invention of the contractor”— does not automatically include inventions made by the contractor’s employees.

This case is largely a moot point because the Federal Circuit has established a particular federal-patent-law interpretation of employment agreements that allows contracting parties to choose language that optionally includes either a promise to cooperate and assign rights or else an automatic assignment that occurs constructively at the moment of invention. If Stanford had chosen the more stringent automatic assignment language for its employment contract, then it would have automatically taken rights. The only problem, of course, is whether Universities have the bargaining power to require its employees to sign the more stringent contracts.

At the same time, however, the decision here offers some cause for caution in relying fully on the Federal Circuit’s usurpation of exclusive jurisdiction over this employment and contract law issue. In Footnote 2, the Supreme Court noted that, in this decision, the court had “no occasion to pass on the validity of the lower court’s construction of those agreements.” As discussed below, Justice Breyer explicitly criticized the Federal Circuit’s contract interpretation.

In dissent, Justice Breyer wrote:

Ultimately, the majority rejects Stanford’s reading (and the Government’s reading) of the Act because it believes that it is inconsistent with certain background norms of patent law, norms that ordinarily provide an individual inventor with full patent rights. But in my view, the competing norms governing rights in inventions for which the public has already paid, along with the Bayh-Dole Act’s objectives, suggest a different result.

Breyer also challenged the Federal Circuit rule distinguishing between a promise to transfer and an automatic transfer agreement. Relying upon history and tradition, Justice Breyer saw the initial contract as creating equitable title in the invention and then looked to old decisions historically did not enforce contracts to automatically transfer of legal title to patent rights.

Given what seem only slight linguistic differences in the contractual language, this reasoning seems to make too much of too little. Dr. Holodniy executed his agreement with Stanford in 1988. At that time, patent law appears to have long specified that a present assignment of future inventions (as in both contracts here) conveyed equitable, but not legal, title. See, e.g., G. Curtis, A Treatise on the Law of Patents for Useful Inventions §170, p. 155 (3d ed. 1867) (“A contract to convey a future invention . . . cannot alone authorize a patent to be taken by the party in whose favor such a contract was intended to operate”); Comment, Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L. J. 847, 854, n. 27 (1958) (“The rule generally applicable grants equitable enforcement to an assignment of an expectancy but demands a further act, either reduction to possession or further assignment of the right when it comes into existence”).

Under this rule, both the initial Stanford and later Cetus agreements could have given rise only to equitable interests in Dr. Holodniy’s invention. And as between these two claims in equity, the facts that Stanford’s contract came first and that Stanford subsequently obtained a postinvention assignment as well should have meant that Stanford, not Cetus, would receive the rights its contract conveyed.

In 1991, however, the Federal Circuit, in FilmTec, adopted the new rule quoted above—a rule that distinguishes between these equitable claims and, in effect, says that Cetus must win. The Federal Circuit provided no explanation for what seems a significant change in the law. Nor did it give any explanation for that change in its opinion in this case. The Federal Circuit’s FilmTec rule undercuts the objectives of the Bayh-Dole Act. While the cognoscenti may be able to meet the FilmTec rule in future contracts simply by copying the precise words blessed by the Federal Circuit, the rule nonetheless remains a technical drafting trap for the unwary. It is unclear to me why, where the Bayh-Dole Act is at issue, we should prefer the Federal Circuit’s FilmTec rule to the rule, of apparently much longer vintage, that would treat both agreements in this case as creating merely equitable rights.

Justice Breyer realized that his argument regarding equitable title had not been briefed by the parties and therefore indicated his preference to remand for briefing of that issue.

66 thoughts on “Supreme Court: Inventors Can Retain Rights Even for Federally Funded Inventions

  1. 66

    This case underscores the vast differences between copyright and patent law; particularly considering the federal-funding angle, I somewhat expected the Court to rule in favor of the employer. Anyway, this patent litigation should serve as a lesson (especially to universities) that it’s not always enough to reduce agreements to writing; you also have to make sure that such agreements are legally airtight.

  2. 65

    This argument seems to be a little pointless. I’m not familiar with FilmTec, but if it’s actually a panel decision that is contrary to prior Federal Circuit case law, then the earlier in time law is binding. See Newell Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 765 (Fed.Cir.1988) (“This court has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc.”). (Obviously, Supreme Court law trumps whether earlier in time or not).

    So, assuming there really is prior case law as Ned states (and I have no reason to disbelieve him or Justice Breyer), then I’d say Ned is correct.

    I’d also say that the fact that the majority doesn’t discuss FilmTec doesn’t mean anything. I wouldn’t try to read the tea leaves as to whether they agree with it or not. ‘

    Finally, I’d say Ned does have respect for the rule of law. Unlike many us (and I’m at fault sometimes for this too), he doesn’t merely look at the latest-in-time case. A 2009 Federal Circuit case isn’t necessarily better law than a 1989 one (or an 1892 Supreme Court opinion).

  3. 63

    of course this is just one of 40 or more methods that inventors are cheated of inventions at the rate congress and kapos are correcting them this may take several hundred years by then the last of the masterinventors myself that is will be long gone and the black hole in invention will swallow the planet.

  4. 62

    Dyk’s point is this: if equivalence is at the element “clip,” and fastener was a perfectly valid, but broader expression of the original concept that could have been used in the claim, equivalence is that would extend to patented variations is acceptable. But when the point of novelty is the clip, allowing equivalence to capture significantly different clips, so different that they are patentable, then this is fundamentally different kettle of fish.

    While there is no per se rule, properly narrowed Dyk’s view is consistent with the Supreme Court decisions on this topic, consistently expressed, for a very long time. The Supremes have always been concerned that claims not cover the independent inventions of others that may achieve the same result. Such scope, they have repeatedly observed, would retard, rather than progress, the advance in the Useful Arts.

  5. 61

    An interesting suggestion, Ned.

    I would think a better suggestion would be to read the case itself, which I did to find those quotes for you. In your call to over rule that case, reading that case might be helpful.

    Just a thought.

    As for the discussion by the Supreme Court, this would not be the first time that the Supreme Court got references, well, somewhat off (and doing so is more likely when the matter is not briefed for them, eh?).

    I am not sure I can agree with you on your comment of “Thus the parties can go their merry ways for years, with people having no idea that the patent they rely on for their business is actually “owned” by someone else.” because there is (and must be) a first assignment, and the better lesson would be to either not make assignments and forget about them, or to make assignments (like promises) only when you intend to keep them.

    What the dissent notes as a trap for the unwary, Ned, is true of ALL complex contracts – not even those only relating to IP. In a sense, the dissent is both over- and under- inclusive – usually a sign that the thought is not well developed (which Breyer does go on to admit). My point above is that even with such an admission from Breyer, you came charging hard and demanding that a decision – fully based in law MUST be overturn and is a monstrosity.

    I think it fair to say (at the very least), that you over-reacted. I am still not sure you understand what Film Tec actually holds. If you think other cases misapplied Film Tec, then we can discuss those cases, but I need a better view from you on precisely why the case you are hung up on MUST be overturned.

  6. 60

    Anyone who expected the Supremes to follow any Federal Circuit decision, FilmTec or anything else, hasn’t been following the plot!

  7. 59

    Does this mean you’ll stop trolling and flaming people on JnE’s blog? You were asked numerous times there to be civil, and you didn’t seem to care about maintaining a polite discourse.

  8. 58

    “Well, one reason to believe it’s invalid is that the differences between the 2nd patent and the first have been deemed “insubstantially different” by a bunch of judges.”

    hah, put the same issue in front of them from the obviousness perspective of the 2nd patent and watch them all turn about-face faster than you can say bob’s your uncle. Literally. Somehow I bet that the missing limitations will suddenly become a lot more important than they were in Hawk’s case.

  9. 57

    This one is a huge move in the right direction for the incentive to create human advancement through invention. A huge defeat for employers as slavers of inventors. This may result in full cival rights in the workplace. A flaming defeat for agreements forced under illegal duress by employers.

  10. 56

    Oh and also MM, there is no reason to believe that the 2nd patent in this case is invalid.

    Well, one reason to believe it’s invalid is that the differences between the 2nd patent and the first have been deemed “insubstantially different” by a bunch of judges.

    I understand where Dyk is coming from and there may be cases where a narrowly applicable per se rule is appropriate. I’m not so sure about the broad rule he is proposing, though.

  11. 55
    Amazed that Hardwanker Alleges to be Hardworking While Still Finding Time to Post Dozens of Comments a Day says:

    Hee, hee. Grandma Hardwanker. That’s funny!

  12. 54

    Oh and also MM, there is no reason to believe that the 2nd patent in this case is invalid. A 10% difference in chemical composition (indeed, not only 10% different, 10% of an entirely new element having been introduced into the material) is a perfectly fine reason to issue a patent save in the situation where someone has already taught such a thing, and that seems remarkably unlikely in this case.

  13. 53

    I know right?

    But idk about your whole position man. Either we give patents the presumption o validity as a matter of lawl or not. I see no reason why a judicially created doctrine should effectively overrule the result that would be statutorily mandated.

  14. 52

    Rader “Without the doctrine of equivalents, improving technology could deprive basic inventors of their rights under
    the patent system.”

    Ah yes, those “basic inventors”. We must not forget them.

    Rader needs a better editor.

  15. 51

    And I’ll repeat Dyk’s bottom line:

    “In short, a purported equivalent cannot be both insubstantially different and nonobvious”

    I agree with this. What Dyk is forgetting is that just because something is patented doesn’t mean that it’s non-obvious. Invalid patents issue all the time which is why Dyk’s per se rule is silly.

  16. 50

    Not sure I do, Ned. I don’t see why the DOE should be precluded per se for a first patent merely because the equivalent subject matter is the subject of a later-filed second patent unless, maybe, the first patent was 102(b) art to the second and the second patent was filed by the same inventor as the first or was co-owned.

    I’m more inclined to agree with Newman’s concurrence.

  17. 49

    Indeed Ned. I don’t know about all his whoppin and hollerin’ but his bottom line is correct. Although I would go further.

    I also like Rader:

    “Without the doctrine of equivalents, improving technology
    could deprive basic inventors of their rights under
    the patent system.”

    Indeed Rader, without DOE the patent system would function correctly giving to each that which he claimed and supposedly invented and no more. Inventing around it should not be that difficult and should be encouraged liberally so that we may have a diversified art.

    “A claim using the terms “anode”
    and “cathode” from tube technology would
    lack the “collectors” and “emitters” of transistor
    technology that emerged in 1948. Thus, without a
    doctrine of equivalents, infringers in 1949 would
    have unfettered license to appropriate all patented
    technology using the out-dated terms “cathode”
    and “anode”.”

    Imagine that, someone that invents an all new device can avoid patent infringement. Whould’a thunk it?

    “Fortunately, the doctrine of
    equivalents accommodates that unforeseeable dilemma
    for claim drafters.”

    You mean that unforseeable dilemma for INVENTORS I believe.

    “the Supreme Court acknowledged the doctrine’s
    role in accommodating after-arising technology.”


    What is really needed is patent reform to squash DOE entirely. Either invent your sht and claim it or else you don’t get to exclude others from it.

    “Thus, the doctrine of equivalents allows patent owners to
    cover after-arising (invented) technology.”

    For god knows what reason.

    Oh, and Newman:

    “This realignment of the economics of
    innovation should not be done casually.”

    I agree, it should be done with purpose and finality.

    “The dissenters’ position is not the law.”

    May very well not be, but it should be. Which is precisely why you should take the case en banc and to the USSC so that they can clarify that tidbit you guys rely on.

    Bottom line, I love people who think that the DOE is necessary to encourage innovation in the first instance while ignoring all the innovation that would result from the outright repeal of the DOE. And also I lulz.

    And I’ll repeat Dyk’s bottom line:

    “In short, a purported equivalent cannot be both insubstantially different and nonobvious”

  18. 48

    Bag of Tricks appears new, so I cut him (her) some slack.

    Bag was also on the money as pertains to you. Thus, I cut him (her) some more slack.

    You, on the other hand, appear to be the epitome of Bag’s empty wagon, responding in exact kind to the low level that is ascribed to you. Are you at all surprised that those interested in pursing issues here would treat you so condescendingly?

    Vulgarity cannot be mistaken for intelligence – not ever. Show a little intelligence if you want to be treated accordingly.

  19. 46

    Hard, I am referring to the discussion of the case by the Supreme Court. They observed that the Feds had converted an equitable doctrine into a legal doctrine without discussion. An equitable right to an assignment still requires a subsequent assignment. A legal assignment does not.

    When one has a right but does not pursue it, one can be barred by SOL, by laches and by estoppel. But, as we have seen in case after case, the legal assignment of a future invention operates when the invention is made and does not require the owner to do anything to perfect that right. The patent is legally assigned, according to the Feds. Thus the parties can go their merry ways for years, with people having no idea that the patent they rely on for their business is actually “owned” by someone else. They find out only when they try to enforce their patent.

    The dissent noted the traps these kind of assignments can generate. The dissenters, however, did not discuss the issues of violation of fundamentals of law and equity such as the elimination of SOLs, laches and estoppel from a late claiming “owner.”

    There is a good reason that the law prior to Film Tec was the way it was. It was right; but it was overturned without discussion.

    True, an owner by assignment can be cut off by a future assignment that is recorded. But, this does not happen when the patent is owned by the inventors.

    As to subsequent developments since Film Tec, you might want to read a few cases that cite it. Film Tec has become a monster.

  20. 45

    Hardwanking: Your post here is nonresponsive and unintelligible. It simply does not advance any issue under discussion.

    It was responsive and perfectly intelligible, axxface. The issues under discussion is whether Bag of Dicks’ comment upthread warranted me telling Bag of Dicks to go eff himself.

    I think it’s pretty clear it was warranted. I’m surprised you didn’t administer one of your stern lectures to Bag of Dicks, as well. Okay, I’m not really surprised.

    Ask yourself, do you comport yourself like this in court?


    Why do you feel the need to do so here

    You could have asked those same questions of Bag of Dicks, axxface. But you didn’t. Instead you gave him a big slopppy kiss. So keep pretending that you love “civility” and I’ll keep noticing your self-congratulatory and unfunny pseudonyms.

  21. 44

    …but it got greedy. ??

    What other reason is there for a university to pursue patents? Isn’t Bayh-Dole based on this motivation?

  22. 43


    Your post here is nonresponsive and unintelligible. It simply does not advance any issue under discussion.

    What point do you wish to make by being surly and foul-mouthed (other than the point that you do not seem capable of replying civilly)? Further, your use of “condescending” implies that my comments are not appropriate, yet your very response here (and above) prove the opposite – my comments are directly on point – if they are condescending, they are so because you are so low that I must descend thus to address you. If you do not like me patronizing you, then act in a manner that will prevent that patronizing.

    Ask yourself, do you comport yourself like this in court? Why do you feel the need to do so here? Do you feel like a tough-guy? Do you feel “cool?” Or is it a matter of laziness and comfort, like a second skin?

    Either way, something for you to think about:
    link to

    But welcome to the new party.

  23. 42


    Rather than a monstrosity, the Film Tec case I read seems well reasoned, quite contrary to your supposition of “without a reason.”

    I seem drawn to this quote from Film Tec:

    In our case, the contract between MRI and the Government did not merely obligate MRI to grant future rights, but expressly granted to the Government MRI’s rights in any future invention.” 939 F.2d 1568, 1573 and the discussion culminating with “The court concluded that, even if § 35(b)(2) of the MRI contract automatically transferred title to the government, such assignment is not enforceable at law as it was never recorded.” id at 1574.

    None of what you state in the second paragrpah of your post at 12:20 are in the decision.

    Please, discuss.

  24. 41

    In that case, The Cardinal should have been content with (at a minimum) a shop right and not worried about Roche. For The Cardinal, there was too much downside risk, but it got greedy. ??

  25. 40

    Was that comment at 12:08 really necessary?

    Were your comments “necessary”, axxface?

    I made a comment upthread that Breyer’s dissent seemed reasonable. For that, Bag of Dicks called me a “joke.” That’s fine, you’re both entitled to be axxholes. But spare us the condescending bullshxt about “elevating the discussion”. You’ve been a bloviating prxck since day one.

  26. 39

    Cheers to M. Slonecker for discussing matters intelligibly.

    Limited Times, your post at 11:38 focuses on what the Cardinal “gets.” Do you realize that the lawsuit was in regards to what the other side gets? The Cardinal was the aggressor here, trying to sue someone else who had rights to the invention. The Cardinal could only have its day in court if it could show that the other side had no claim to the invention.

    Jeers to Malcolm Mooney for confirming the stands taken by Bag of Tricks and by myself. Was that comment at 12:08 really necessary?

  27. 38

    What you are missing Film Tec v. Allied-Signal. That case converted centuries old law that an obligation to assign a future right is only equitable into a legal fact once the invention was made. This spawned the doctrine that the Federal Circuit will decide this issue as a matter of Federal Law.

    The result of Film Tec has been incredible. There was one case where a ex employee who had informed his former employer of the patent and had received a waiver, who had invested with others his time and effort and money for more than a dozen years in developing a business around the patent, lost his patent to the company because the Feds decided that the invention had been assigned to the company by such a contract. Statute of limitations, laches and other defenses were swept asside.


    Monsterous in fact.

    And, all because of Film Tec, a case that changed centuries of well established law without explanation. They just did it.

    But three justices openly questioned Film Tec. The majority did not address it because they noted that Stanford had raised the issue (properly?). A concurring opinion stated that court viewed the matter of Film Tec to be an open question.

  28. 36

    The Supreme Court is holding that the Bayh-Dole Act did not supplant common law in regard to ownership of inventions. Therefore, either (a) The Cardinal owns the invention inasmuch as a full-time research professor is “hired to invent,” or if he is not expressly hired to do research (a remarkable proposition) (b) the shop-right doctrine kicks in, which gives The Cardinal a paid-up, royalty free license to use the inventions. Soooo, why the lawsuit? What am I missing?

  29. 35

    By the way, and please correct me if I am mistaken, but in every instance where “hired to invent” has arisen in my practice it has done so under the provisions of state law, and not federal law.

  30. 34

    Frankly, I am a bit surprised that the majority, in commenting on Justice Breyer’s dissent, did not make mention of longstanding law that “shop rights” is the governing doctrine when an employer is foolish enough to not secure title at the outset when a new employee is hired “to invent” comes aboard. If the doctrinal requirements are met, the employer is entitled to practice the invention, albeit under license and not title.

    Moreover, I did find Justice Breyer’s reliance on a slect “cherry picking” of 35 USC 210 as lending support for his position. Perhaps he would do well to once again take a look at that Section of the Bayh-Dole Act, and in particular the verbiage contained in the last full paragraph to 35 USC 210(a). 35 usc 210(a) begins with a laundry list of then existing federal law that Bayh-Dole was intended to supplant. The last full paragraph could not be more clear that its operative was directed to “future” acts of Congress. It would be remarkable indeed to construe Bayh-Dole as somehow falling under “other currently existing” and “future” acts of Congress. 35 USC 210(a) cuts precisely in the opposite direction.

  31. 32

    The “hired to invent” doctrine requires more than “mere” employment. The employment must be specifically to invent – I haven’t researched it, but I doubt that an engagement where invention is anticipated to result from other duties would qualify.

    Even if “hired to invent” did apply here, it might present the same type of equitable title issues as the “duty to assign,” thus raising precisely the same question as to priority of ownership. I guess now I’ll have to read Breyer’s dissent…

  32. 31

    I have a question: Was the Stanford researcher an employee? If so, shouldn’t his employer automatically own the patent rights under the “hired to invent” doctrine regardless of an assignment vel non?

  33. 30

    I wondered the same thing. Under the assumption that they were going to overturn, I modified my contracts and licenses to try and guard against it.

  34. 29


    I would beg to differ about your assessment of Malcolm.

    Without descending to the same level of trash talk and vapid commenting, I will merely say that Bag of Tricks has an apt analogy with the empty wagon and the number of posts that have little to no redeeming value or substance that populate most threads here at Patently-O.

    If we all stuck to arguments on point, with merit, and under our recognized ethical guidelines for not misrepresenting legal rulings (like we would if we were addressing a court), then the “smack” would dissipate, the smoke would clear and we would actually be able to see what knowledge can be brought forth.

  35. 26

    Listen you tiny nincompoop, stop crying. You guys from anti-patent cabal took a major blow from the Supreme Court today. We on the other side have been losing this battle steadily. Hopefully, this case can inspire Congress to come to its senses. Some of them must of some qualms about uprooting the oldest patent system in the world for something radically different without any good reason for doing so and for a lot of good reasons for not doing so.

  36. 25

    Malcolm Mooney,

    Like anything that sounds reasonable to you has any force of persuasion. Let me set you straight – you are a joke.

    You are just as much a shill as Ned.

    Empty wagons make the most noise – and Malcolm Mooney and Ned Heller are easily this site’s two most noisy wagons.

  37. 24

    Bag, so? Their views have not changed.

    Well at least you should admit your prevarication then, and not shameless attempt to spin some kind of big change when none exists. There is a world of difference between “are now supported and “Based on… endorsement… (USBIC)) has today,” especially when you add the purposefully misleading “curve ball from left field” to indicate a sudden and surprising change and remarkable event – the subject of your statement is not the Supremes – the Supremes act as a modifier. Curve ball from left field? This is a ball sitting on a child’s tee.

    You ask “so?” I will tell you so – you have been caught in an outlandish exageration to suit your position. You do not even hide the shill fator in your posts – utterly shameless. Do you really not care at all about your credibility? Do you really think that you posting 20 times a day on these boards will make up in quantity what you lose in quality? Are you terminal and simply do not care anymore?

  38. 23

    In a single word, YES.

    Show me the Cite, wherein you think otherwise. Everyone and their brother knows the case where a Supreme Court dissenting view was dissed, not once but twice by the Feds. Show me a single one that meets what you are saying here – where a minority makes it mandatory – a must, as you say.

    Just one.

    Let’s see it.

  39. 22

    Bag, so? Their views have not changed. But their views are now supported by a Supreme Court opinion. It is the Supreme Court opinion that is the curve ball from left field, not the views of the Business organization.

  40. 21

    Listen, Bag, the Supremes noted the apparent Fed. Cir. error. Do you really believe the Feds are going to defy the Supreme Court?

  41. 20

    Bag of Tricks the minority view of Breyer is pure horse-pucky.

    Seems pretty reasonable to me. And reason has a force of its own, as we all know.

  42. 19

    As I see that ping has blown his own horn, I will of course point out that I in fact called it, with specificity, as written in this patently-o thread:

    link to

    They didn’t explicitly get into notice requirements for takings, but they addressed the idea within the framework of contractual assignment language. They DID acknowledge “that rights initially belong to the person(s)-as-inventor(s)”, however.

    Finally, I don’t think it is a moot point, and we haven’t heard the last of this issue. There are many ways this decision can be strategically applied to different situations.

  43. 18

    Curve ball from left field…?

    Excuse me Ned, but the group you mention OPPOSED the measure prior to the “emphatic Supreme COurt endorsement.”

    You have turned into a shamelss shill.

  44. 17


    Let’s be clear – three of nine Justices noted the Film Tec case – six of nine Justices chose not to.

    Ask yourself why – even given Sotomayor’s SINGULAR focus. As to any power to ascribe even a concurence of a single Jsutice, you are delusional. If Sotomayor’s viewpoint – even given an “open” reading were at all persuasive, the majority would have expressly adopted that position and there would have been no need for Sotomayor to be alone. It is an ungodly reach for you to say that because Film Tech was not affirmed (it was not affirmed because it need not be) that the Feds must now reverse. You have stated now twice that the position was not briefed, and yet you want to ascribe power to an unbriefed position – on what basis? Clearly, even if I go so far as consider teh topic “open,” your exaltation that the Feds MUST reverse is baseless – especially, as you are fond to note, tha tthe Justice were not briefed and thus the minority view of Breyer is pure horse-pucky.

    Cite me one case of precedence wherein a minotrity view forced the CAFC to act so (and I can give you several that the CAFC might it an explicit point that the minority view of even the Supreme Court simply is not law, and that the CAFC was due to give any such opinion ZERO weight if it so chose to do.

    Again – you state that the CAFC decision was a mere panel decision as if that voids the decision of any force of law.

    You are dead wrong on this.

  45. 16

    Meanwhile, the good folks at Stanford are looking to see if they can somehow reopen the case on the Film Tec issue. More power to them.

  46. 15

    Bag, Film Tec upturned centuries of law without explanation. It was a panel decision. The Supremes noted the error.

    The majority said as the issue was not before them, they would not decide it. See. fn. 2. The concurrence observed that the issue was open, pointing to fn. 2, as the the majority expressly did not affirm Film Tec. The dissent would have reversed because Film Tech was wrongly decided.

    Where does that leave us? That Film Tec was affirmed by the Supreme Court?


    The Feds will soon take up Film Tec and reverse it as the must.

  47. 14

    You have ba_lls, I will give you that.


    You introduce the non-sequitur of the issue not being briefed in support of your position of 3 Justices against 6 Justices.

    You still lose.

    You are aware, of course, how opinions are formulated and must surely be aware that the 6 Justices who refused to sign up for that minority view had ample time to consider signing up for it.

    This is especially true where as here, a concurrence SINGULARLY isolates that position.

    Unequivocally, this means that 6 justices REFUSED to hold what you want them to hold.

    Yes there is a loser to this argument – and it is not me.

  48. 13

    Based on the emphatic Supreme Court endorsement that the right to a patent inhers in the inventor as an exercise of a constitutional authorization of power not just to grant patents, but to grant them to inventors, the U.S. Business and Industry Council (USBIC) has today called for the withdrawal of HR1249.

    What a curve ball from left field!

  49. 12

    Bag, the issue was not briefed or argued. See the concurring opinion.

    Bag, you have lost the war. It is over. It is time to admit it.

  50. 11

    And before you tell me that there are 3 Supreme Court Justices who believe in that opinion, I will tell you that twice as many did not.

    I like my odds better than yours.

  51. 9

    You do understand Ned Heller that even a mere panel decision has more authority than that can arise from the view of two dissenting justices and one concurring justice.

    Have you no respect for the actual rule of law?

  52. 8

    Bag, Film Tec was a panel decision. If there is any prior decision, en banc or otherwise, by the Feds or by the CCPA, or by the Supreme Court, holding the right equitable and not legal, Film Tec is dead. I haven’t studied the issue, but in the face of the heavy criticism by the Supreme Court, I doubt if Film Tec will long be followed.

  53. 7

    Looks like Film Tec v. Allied-Signal is dead. My god what a slam that was against an arrogant Federal Circuit.

    Yes, it looks “dead” because three justices indicated so.

    Wait, that’s a minority only, right? Since when does a minority actually change law? Oh, wait – it doesn’t.

  54. 6

    I don’t know about them, but I have my guess about you, lol.

    FYI, court makeup issues are interesting for some people because it helps frame arguments in the most persuassive way. Kagan and Sotomayor are new and expected to go with Breyer and Ginsburg…. only they didn’t. That’s noteworthy to us observers.

  55. 5

    Section 115 is cited: “The original and first.” This means THE original and first inventor, not AN orignal and first inventor.

    The new FITF section 115 continues the language. It allows THE original inventor or presumably his assignees to obtain a patent.

    One wonders how a person who is not THE original inventor obtains a valid patent under the new statute?

  56. 3

    Reposted here by popular demand:


    link to

    in yet another dazzling display of the ultimate master’s divine observations, ping is once again exalted as the opinion mirrors the hallowed ping’s observations.

    the word of ping

  57. 2

    I suppose if you got most of your information about Kagan and Sotomayor from Fox News you might think that they were card-carrying communists.

  58. 1

    Kagan and Sotomayor favored private property rights over the government, siding with Alito, Roberts, Thomas, et al.?

    Very interesting result in this case, not for the ruling, but for the camps people landed in.

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