Named inventor case returns to district court
Washington DC | 11 February 2016

The US Court of Appeals for the Federal Circuit has vacated a lower court’s dismissal of a catheter patent ownership dispute between TriReme Medical and competitor AngioScore.

The Federal Circuit ruled on 5 February that the District Court for the Northern District of California could not ignore a question of fact through a motion to dismiss.

AngioScore owns the three patents in dispute, but TriReme challenged its ownership in 2002, when it claimed that its scientist Dr Chaim Lotan helped to develop some of the invention protected by the patent.

AngioScore sells a line of catheters that are designed to open arterial blockages. All three patents relate to this concept, none of which list Lotan as an inventor.

The scientist signed a consulting agreement with AngioScore in 2003, after which AngioScore acquired all of the rights to the inventive work Lotan completed. But following the agreement, Lotan performed further work for the company.

TriReme sought to have Lotan named as an inventor of the patents to avoid an infringement claim and filed suit against AngioScore at the District Court for the Northern District of California for a correction of inventorship in 2012.

Judge Laurel Beeler of the district court dismissed the case for a lack of subject matter jurisdiction, holding that any interest Lotan may have had was already assigned to AngioScore.

TriReme appealed against the decision and the Federal Circuit issued its decision on on 5 February.

The Federal Circuit relied on an understanding of Section 9(b) of the Patent Act where “a consultant agrees to promptly disclose to the company and hereby assigns to the company, or its designee, all right, title and interest in and to all inventions, original works of authorship”.

According to the Federal Circuit, the district court merely found that Lotan’s work date “might have” amounted to developing his recommendations.

“Whether the work falls under Section 9(b) remains a question of fact that cannot be resolved on a motion to dismiss,” ruled the Federal Circuit.

The case has been sent back to the district court to consider whether Lotan’s work came within the language of Section 9(b).

Author: Tammy Facey

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