Euclid Chemical v. Vector Corrosion (Fed. Cir. 2009) 08-1170.pdf
The district court ruled that Vector was the owner of the '742 patent based on an unambiguous assignment agreement from the inventor. On appeal, Euclid argued that the assignment was not valid and that – in fact – Euclid was the bona fide purchaser of the patent rights.
The December 2001 assignment to Vector purported to grant Vector all rights "to my US, Canadian, and European applications for patents and issued US patent" – specifically mentioning Patent No. 6,033,553 and "any and all divisional applications, continuations, and continuations in part … 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…"
By the time of the assignment, the '742 patent had already issued as a continuation in part of the '553 patent. The '742 patent was not expressly mentioned in the assignment.
Judge Linn found the assignment ambiguous. On one hand it discusses the inventor's "applications … and US patent" – indicated that only one patent was intended to be assigned. On the other hand, the '742 patent was a continuation in part of the patent listed in the assignment. "We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law." On remand, the district court should consider relevant extrinsic evidence to interpret the assignment.
In dissent, Judge Newman argued that the assignment clearly did not include the '742 patent and thus that Vector did not own that patent.
Notes: This post was written using my new MacSpeech dictate software.