Property, intangible

a blog about ownership of intellectual property rights and its licensing

The Unmentioned

Here’s a patent assignment, in its entirety:

I, JACK BENNETT, . . . do hereby sell and assign to VECTOR CORROSION TECHNOLOGIES LTD. . . . all my interest in the United States, Canada and in all other countries in and to my US, Canadian, and European applications for patents and issued U.S. patent, namely:

1. Issued U.S. Patent 6,033,553. This patent claims the specific use of LiNO3 and LiBr to enhance the performance of metallized zinc anodes;

2. US Application No. 08/839,292 filed on April 17, 1997,

3. US Application No. 08/731,248, filed on October 11, 1996 (now abandoned),

4. EPO Application No. 99122342.1, filed November 9, 1999, and

5. Canadian Application No. 2288630, filed November 8, 1999,

any and all divisional applications, continuations, and continuations in part together with the entire right, title and interest in and to said applications, any and to all divisional applications, continuations, and continuations in part thereof, the right to claim priority therefrom under the International Convention, 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; and hereby authorize the issuance to said assignee of any and all said Letters Patent not already issued as the assignee of entire right, title and interest in and to the same, for the sole use and benefit of said assignee, its successors, assigns or legal representatives; and hereby covenant and agree to do all such lawful acts and things and to execute without further consideration such further lawful assignments, documents, assurances, applications, and other instruments as may reasonably be required by said assignee, its successors, assigns or legal representatives, to obtain any and all Letters Patent for said invention and vest the same in said assignee, its successors, assignees or legal representatives.

SIGNED AT: Chardon, Ohio, U.S.A.

This 20th day of December, 2001

The problem? Patent No. 6,217,742 was a continuation-in-part of the ‘533 patent but had already issued at the time of the assignment and wasn’t mentioned in it. Was the ‘742 assigned to Vector or not? The district court said yes, the Federal Circuit reversed:

At bottom, we cannot give the Assignment a “definite legal meaning.” Under one reasonable interpretation, the Assignment includes the ‘742 patent, because it issued from a continuation-in-part of the ‘553 patent. But under another reasonable interpretation, the Assignment excludes the ‘742 patent, because it was an already issued patent, not an application, at the time of the assignment. We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law.

Summary judgment vacated and remanded.

Judge Newman concurred that the district court erred in granting summary judgment, but also disagreed that a trial was necessary at all, since clearly the ‘742 patent was not assigned. The two patents were directed at two different forms of the technology, one for “metallized” or “distributed” zinc anode technology and the other for “embedded” or “discrete” zinc anode technology. It was clear from the assignment and other related documents that the assignment was of only the “metallized” zinc anode technology, as the assignment itself states. In fact, the metallized zinc anode technology was expressly disclaimed in the ‘742 patent: “The ‘742 specification describes the invention as for ’embedded anodes comprised of individual elements that are spaced apart from one another, as opposed to distributed anodes that essentially cover the entire concrete structure surface.’” Judge Newman chided the majority for thinking that the patent could have been assigned when it wasn’t even mentioned in the assignment document:

It is a truism of patent practice that transfers of patent property require specificity as to the property transferred. The practice requiring specificity of identification of transferred patents is so entrenched, that it would smack of misfeasance to have omitted the known ‘742 patent from the list of assigned properties, if the parties had intended that it be assigned.

Euclid Chem. Co. v. Vector Corrosion Techs., Inc., Civ. No. 08-1170, 2009 WL 838276 (Fed. Cir. April 1, 2009)

© 2009 Pamela Chestek

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