Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Core Optical Tech. v. Nokia Corp.,No. 2023-1001 (May 21, 2024), vacating a district court’s grant of summary judgment based on lack of standing.
Core Optical sued Nokia and others for infringing U.S. Patent No. 6,782,211. Nokia moved for summary judgment asserting Core Optical lacked standing. Specifically, Nokia asserted a 2011 assignment of the ’211 patent to Core Optical by inventor, Dr. Mark Core, was ineffective because Dr. Core had already transferred the patent rights to his former employer, TRW, via an August 1990 employment-associated invention agreement. The August 1990 agreement was signed when Dr. Core joined TRW’s fellowship program while completing his PhD. The agreement required all inventions to be assigned to TRW, except for “Non-TRW Inventions” meeting specific criteria. “Non-TRW Inventions” were required to have been “developed entirely on [Dr. Core’s] own time.” The district court determined that language unambiguously did not apply to the time Dr. Core spent on his PhD research, concluding such time was at least in part TRW’s time. Because the ’211 patent was developed by Dr. Core during his PhD research, the district court granted summary judgment that Core Optical lacked standing to assert the ’211 patent. Core Optical appealed.
The Federal Circuit vacated and remanded. Applying California law, the Court analyzed the contract language in the August 1990 language on which the district court based its decision. The Court concluded that the “entirely-own-time” phrase “does not unambiguously express a mutual intent to designate either all the time Dr. Core spent performing his PhD research as his own time (as Core Optical contends) or some of it as partly TRW’s time (as the district court, in agreement with Nokia, held). The Court explained that further factual inquiry was necessary to determine the parties’ mutual intent. Without identifying all potentially relevant facts, the Court suggested consideration of: (1) TRW’s delay in asserting ownership; (2) evidence that Dr. Core’s former project manager at TRW stated Dr. Core owned the ’211 patent; (3) evidence of custom, usage, and practice in the field; and (4) the principle that ambiguities in contracts should be construed against the drafter. Finally, the Court noted that, because the ownership question is a threshold jurisdictional issue of standing, the district court on remand has the authority to act as fact-finder in resolving the jurisdictional issues.