September 20, 2021

Volume XI, Number 263

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September 20, 2021

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“Shall Be” Language May Not Effectuate a Present Automatic Assignment of Rights

In Omni MedSci, Inc., v. Apple Inc., Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), a divided Federal Circuit panel affirmed the district court’s denial of Apple’s motion to dismiss.

While Dr. Islam was an employee at the University of Michigan, he acquired several patents and subsequently assigned the patent rights to Omni.  Omni later sued Apple for infringement, and Apple filed a motion to dismiss for lack of standing. Apple argued that the university-owned the asserted patents according to the university bylaws, which stated that patents acquired by university staff and supported by university funds “shall be” the property of the University.  The district court denied Apple’s motion, finding that the university bylaws were at most a statement of future intention to assign, and not a present automatic assignment of title.

On appeal, the Federal Circuit agreed.  The Court found that several aspects of the bylaws indicated that they did not effectuate a present automatic assignment, including (1) the use of the phrase “shall be the property,” which reflects a promise of potential future assignment, and (2) the university’s requirement that a separate form be executed, which does not contain language of confirmation, but rather contains distinct and unambiguous language of present assignment.

Judge Newman dissented because, in her view, the university’s employment agreement included an unambiguous statement of intended and agreed ownership of inventions made with university support.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 217
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About this Author

Eunice Y. Lee Attorney Patent Applications Finnegan Law Firm Washington DC
Associate

Eunice Lee focuses her practice on the preparation and prosecution of patent applications in the mechanical and electrical fields.

Eunice’s patent prosecution practice focuses on drafting and prosecuting patent applications in a variety of technologies, including automotive technologies, liquid packaging, steel sheet manufacturing, computer software technologies, medical devices, business methods, and electronics.

Prior to joining Finnegan, Eunice worked as a patent examiner at the U.S. Patent and Trademark Office (...

202-408-6010
Caitlin O’Connell Intellectual Property Litigation Attorney Finnegan Law Firm
Associate

Caitlin O’Connell focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Caitlin is involved in all phases of litigation, including pre-litigation analysis, claim construction, fact discovery, expert discovery, and trial. Caitlin’s litigation experience includes drafting pleadings, preparing fact and corporate witnesses for depositions, coordinating discovery, working with experts to develop infringement and validity positions, preparing expert...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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