Ambiguous Phrase in a Patent Assignment Precludes Summary Judgment Regarding Standing

Written by: Kenneth O. Aruda, Ph.D. & Justin J. Gillett

Core Optical Technologies, LLC v. Nokia Corporation

Before Dyk, Mayer, and Taranto. Appeal from the Central District of California.

Summary: Applying California law, the phrase “entirely on my own time” in an employment agreement was found ambiguous and therefore precluded summary judgment of no standing to sue for patent infringement.

Core Optical Technologies, LLC sued Nokia Corporation and others (collectively “Nokia”) for patent infringement. Named inventor Dr. Mark Core had assigned the asserted patent to Core Optical in 2011. Nokia moved for summary judgment that Core Optical lacked standing. Nokia argued that the 2011 assignment was ineffective because Dr. Core had already assigned the patent rights to a third party called TRW Inc. through a 1990 employment-associated agreement. This 1990 agreement automatically assigned to TRW inventions that Dr. Core developed during his employment, but excepted inventions that were developed “entirely on [Dr. Core’s] own time.” Neither party disputed whether Dr. Core conceived of and reduced to practice the invention claimed in the ’211 patent in the course of his PhD research beginning in 1993. During that PhD program, Dr. Core continued to work both as a salaried part-time TRW employee and as a PhD fellow sponsored by TRW. TRW paid Dr. Core’s tuition and fees and provided Dr. Core with wages, a monthly stipend, and full employee benefits. The district court determined that the time Dr. Core spent on his PhD research was not entirely Dr. Core’s “own time.” It granted summary judgment that Core Optical lacked standing. Core Optical appealed.

The Federal Circuit vacated the district court’s judgment. Applying California law, it found that the phrase “entirely on my own time” was ambiguous and could not be conclusively interpreted without further factual development. The Federal Circuit noted conflicting evidence regarding Dr. Core’s use of TRW resources and the extent to which his PhD work, which led to the patent, was conducted independently of his employment. The Federal Circuit remanded for further proceedings to resolve these ambiguities.

Judge Mayer dissented. He opined that the district court correctly granted Nokia’s motion for summary judgment after determining that, as a matter of California law, Dr. Core did not develop the patented invention “entirely on [his] own time.”

Editor: Sean Murray