Divorce and Patents

Enovsys v. Nextel (Fed. Cir. 2010)

Mundi Fomukong is a co-inventor of the patents-in-suit. At the time of the invention, Fomukong was married to Fonda Whitfield. Sometime after the first patents issued, Fomukong and Witfield divorced. Later, the second patent issued; Fomukong formed Enovsys; and he (along with his co-inventor) assigned their rights to the new company. Later, when Enovsys sued Sprint-Nextel, the defendant challenged the case on standing. Sprint's argument is based on the rule that any patent infringement actions must be brought jointly by all co-owners of the patent. Specifically, Sprint argued that Ms. Whitfield retained an interest in the patent rights even after the divorce and, without Ms. Whitfield's support, Enovsys lacked standing. (Ms. Whitfield assigned her rights to Sprint.)

In the US, patent ownership rights are primarily controlled by state laws. At times, patent attorneys are called to understand their local laws of contracts, employment, inheritance, and (here) divorce. Thus, in deciding this case, the court looked first to the law of California — the site of the marriage, invention, and divorce.

California is a "community property" state and “all assets acquired during a marriage are presumptively community property.” In their divorce filings, however, Fomukong and Whitfield checked the box next to the statement that “We have no community assets or liabilities.” Without citing specific California law, the Federal Circuit held that that the final divorce decree coupled with this box-checking stripped Whitfield of her community property rights in the patent. "[A]lthough the final divorce decree was silent as to particular property, it nevertheless adjudicated the parties’ rights with respect to that property because it was based on an uncontested complaint which alleged that there was no community property."

With the issue of ownership settled, the court then affirmed the lower court's claim construction and infringement verdict.

 

69 thoughts on “Divorce and Patents

  1. 69

    who haven’t decided to look for every possible angle to score a larger divorce settlement.

    …no matter how small that group of people may be.

  2. 68

    So do you agree that I can advise clients that employment agreements that assign inventions do convey the community property right, if there is any.

    I don’t think you’ll find a lot of experienced divorce lawyers around here to give you a conclusive answer.

    It does appear to me, however, that your proposed advise agrees with the settled expectations of inventors, their employers, and those spouses of theirs who haven’t decided to look for every possible angle to score a larger divorce settlement. Ask any happily married spouse, and you’ll probably find no trace of any sense of entitlement to those inventions.

    I reiterate that this is not my field, but I find it hard to believe that any court would ever rule that a spousal authorization is required on employment-to-invent contracts, invention assignments, or the like. It would make married inventors virtually unemployable.

    But that’s a pragmatic ruling rather than what I expect would be a very complex and nuanced strictly legal one, so don’t be surprised if you’re surprised by some well-meaning trial judge one of these days.

  3. 67

    I’m interested in giving clients advise on this issue. Wading though your exchanges I do see the “authority” point which would seem to give the inventor spouse the power to assign inventions made during employment, which of course is in consideration of getting hired and the salary and other benefits are community property, so the assignment agreement was for value to the benefit of the community. But in the Enovsys case Judge Lew seems to operate on the assumption that if one of the parties had listed it, it would be community property or at least the point would have been in issue. Of course it wasn’t an issue in the case because the waiver mooted it. Needless to say Judge Lew doesn’t make California precedent, and anyway he’s just a trial court judge.
    So do you agree that I can advise clients that employment agreements that assign inventions do convey the community property right, if there is any.

  4. 65

    ping,

    Still waiting for you to explain what you think 1100(a) means if not what I say it means. None of Cal. Fam. Code 1100(b)-(d), 761, 1103, 760, 770, 772, 2550, or anything else that you’ve mentioned negates the ability of an inventor spouse to sell his patent without the consent of the other spouse for value.

  5. 64

    YAP,

    You sound like Ned, declaring victory when you have nothin.

    Now you be talkin goals in a baseball paradigm – you can’t even get your sports right.

  6. 63

    ping,

    Watching you squirm like a stuck pig is become truly sad. 1100(d) only applies to all or substantially all the assets of a business. Since you’re arguing that the inventor cannot even assign his patent to his business without a spouse’s consent. That’s your first own-goal. 1100(e) only imposes a fiduciary duty. The inventor cannot transfer his patent in a fraudulent transaction (less than fair value) or give it away as a unilateral gift (see also 1100(b)). That’s your second own goal.

    As for your umpire sock puppet, every lawyer knows that the specific supercedes the general. That’s your third own goal.

    What does 1100(a) mean if every transaction requires the consent of both spouses, hmm? Unless you can answer that question, we’re going to have to call the game under the mercy rule.

  7. 61

    California Civil Code Sections 980 – 989 speak to personal property resulting from “products of the mind”, and places an interesting twist on what is “property” and who “owns” it.

    If nothing else, these sections suggest to me that there is a fundamental disconnect/ambiguity in California law when it comes to matters pertaining to patents.

    Of course, this is hardly surprising and likely the case in all states that recognize the concept of community property.

  8. 60

    As you turn and walk to the bench, you might want to read through the rest of 1100 (specially (d) and (e)).

  9. 59

    Thatta be strike three YAP – ya be the one who needs to show that CFC Sec. 1100(a) supercedes the Ump’s call – it dont.

    That’s called a strike out.

  10. 58

    Ping,

    Kindly explain how any of that supercedes CFC Sec. 1100(a). Really, you’re not even trying at this point.

    I didn’t claim that it wasn’t community property. I claimed that “either spouse has the management and control of the community personal property, whether acquired prior to or on or after January 1, 1975, with like absolute power of disposition, other than testamentary, as the spouse has of the separate estate of the spouse.”

    Whining about the general nature of community property in CA does nothing to change the fact that one spouse can unilaterally sell all but a few very specific classes of assets for fair value without the consent of the other. Patents are not a member of any of those specific classes.

  11. 56

    California is a community property state. Except as otherwise provided by statute, all property, real or personal, wherever situated, acquired by a married person during the marriage while domiciled in this state is community property. Except upon the written agreement of the parties, or on oral stipulation of the parties in open court, or as otherwise provided in this division, in a proceeding for dissolution of marriage or for legal separation of the parties, the court shall divide the community estate of the parties equally. Separate property is not included in the division of the community estate.

    Separate property of a married person includes all of the following:
    (1) All property owned by the person before marriage.
    (2) All property acquired by the person after marriage by gift, bequest, devise, or descent. (3) The rents, issues, and profits of the property described in this section.

    (b) A married person may, without the consent of the person’s spouse, convey the person’s separate property. After entry of a judgment of legal separation of the parties, the earnings or accumulations of each party are the separate property of the party acquiring the earnings or accumulations.

    [Based on California Family Code – Sections: 760, 770, 772, 2550]

    Ping gets lucky – Yet another’s line drive is a foul ball.

  12. 55

    Michael,

    If you haven’t noticed by now, ping is not going to provide concrete examples or cite to much law, if any. You can point him right at a statute and he’ll insist that you’re wrong based on some nebulous concept that he’s got locked up in his head.

    By the way ping,
    link to codes.lp.findlaw.com
    link to codes.lp.findlaw.com

    Unless a patent is a trust or an estate, you’re not going to find an exception to sec. 1100(a) in there either. It only takes one spouse to convey a patent in California.

    *crack* And it’s a line drive to the outfield wall! The crowd goes wild. Safe at third!

  13. 54

    It appears to me that you are supporting my original observation, namely, it can be argued that a patent is “property”…or, to use the term as it appears in Title 35 “attributes of personal property” at Section 261.

    Yes, a patent does not confer a right to practice, but only a right to exclude others from performing specific acts. However, while other forms of property are associated with rights in addition to the right to exclude, they nevertheless share the right to exclude in common with patents.

    Hence, I am still interested to learn about any examples of property that do not inherently include the right to exclude.

  14. 53

    Mikey – isn’t there a distinction that you are overlooking? Patents are less a property to hold and more a property to exclude. The “negative right” nature of a patent is materially different than other property – A patent does not give one a right to make something, to import something, or the like – it is strictly a right to exclude others. This has to be kept in mind…

  15. 52

    I am interested in learning about examples of “property” that do not inherently include the right to exclude.

    Land? Yes. Tangible items? Yes. Negotiable instruments (stocks, bonds, mortgages, etc.)? Yes. Trade secrets? Doubtful, though dicta in cases such as Ruckelshaus v. Monsanto use the term loosely, but without outright so deciding. Patent applications? No exclusionary right until a patent is granted? Etc.

    5th Amendment caselaw, as well as 5th/14th Amendment caselaw that has not as yet declared that private property as used in the 5th Amendment also embraces patents.

    This is not to say that I am convinced my comments are infallible, but only that as yet I have not come across property that does not have associated therewith an exclusionary right.

  16. 50

    Yap,

    That’s what we call a “whiff”. Ya like totally missed the ball and it’s lying at your feet.

    You can pick it up if you want to.

  17. 49

    as far as “I think one way of deciding this would at least be someone offering up some law” it wasn’t chopped liver I was quoting from – 35 USC 261 is the law.

    35 USC 261 is a tiny part of the law. As you have previously demanded, you also need to show that no other part of the law applied. Back at ya, Sunshine.

  18. 47

    No prob Phoenix.

    as far as “I think one way of deciding this would at least be someone offering up some law” it wasn’t chopped liver I was quoting from – 35 USC 261 is the law.

    If ya like reading about the law, ya gonna love teh researchin part. Let me know how your research goes.

  19. 46

    I think one way of deciding this would at least be someone offering up some law. I still haven’t heard of – and looks like Mike, too, doesn’t know of – a case that actually decidedly says a patent is property / a patent becomes property at X point. Ping – any case law to support your statements “Short answer: yes, there is property before a patent issues. ” and “Also, while I agree with you that the situation is muddled, I do not agree that it is so muddled for a lack of understanding of what “property” means. I think that’s the easy part.”

    Please understand, I’m not trying to call you out – I’d like to read the law so I can know in the future.

  20. 45

    YAP,

    Thanks for posting the relevant statutes. However, doesn’t the question of ownership also depend on the actual assignment and/or employee agreement. For instance, if the inventor assigned “his or her interests in the invention,” it seems that that his assignment would not necessarily cover the spouses interests. So, I am not sure your cited statute applies. I am also not sure that a bunch of patent attorneys are going to resolve this issue on community property law.

    I know I am going to look into such issues the next time I perform a DD.

  21. 44

    I would state that this decision is tantamount to overruling the Erie Doctrine. This case should be appealed. . . . Should you desire assistance with the appeal, I would be happy to assist.

    Uh, Kenny, this was the appeal.

  22. 43

    YAP,

    Your handwaiving has been ruled insufficient to transfer the burden. You are directed to back up your statements, else they will be disregarded.

    Ball is in your court, Sunshine.

  23. 41

    This case does great violence to the Republican form of government that the Federal Goverment must secure to the several states. I would state that this decision is tantamount to overruling the Erie Doctrine. This case should be appealed. I dismiss a trademark infringement action in Federal Court last year based upon the Erie Doctrine. Of course, I was before Judgle Ronald M. Whyte, an exception judge if I must say. Should you desire assistance with the appeal, I would be happy to assist.

  24. 39

    ping,

    That’s why I included subdivisions (b), (c), and (d). Tell me where a patent fits in to any one.

  25. 38

    Mikey,

    Slightly off with the comment of “(though it is useful to bear in mind that an important component of property is the right to exclude)” as not all property has such a right.

    Also, while I agree with you that the situation is muddled, I do not agree that it is so muddled for a lack of understanding of what “property” means. I think that’s the easy part.

    YAP – you be still wrong. Where is my ad hominem attack against you? Sure I throw a lot of hom out there, but where exactly am I wrong? You be too quick to throw a confrontation against me – sorta like the RWA guy who still has Malcolm’s red p u m p s.

    As to your assertion, ya need to take a closer look at “Except as provided in subdivisions (b), (c), and (d)” – I be pretty sure a Cali judge would consider “but it only takes one to sell the…patent rights.” would not hold. – the little somethin about obtaining the written consent is all I need to demonstrate that you be wrong. But hey, thanks for playin.

  26. 37

    YAP – Do some time in marital law – and you will see just how funny (and sad) your statement is.

    This is exactly what I’ve come to expect from you, ping. Hand waving and ad hominem attacks.

    California Family Code Section 1100 provides that

    (a) Except as provided in subdivisions (b), (c), and (d) and Sections 761 and 1103, either spouse has the management and control of the community personal property, whether acquired prior to or on or after January 1, 1975, with like absolute power of disposition, other than testamentary, as the spouse has of the separate estate of the spouse.

    (b) A spouse may not make a gift of community personal property, or dispose of community personal property for less than fair and reasonable value, without the written consent of the other spouse. This subdivision does not apply to gifts mutually given by both spouses to third parties and to gifts given by one spouse to the other spouse.

    (c) A spouse may not sell, convey, or encumber community personal property used as the family dwelling, or the furniture, furnishings, or fittings of the home, or the clothing or wearing apparel of the other spouse or minor children which is community personal property, without the written consent of the other spouse.

    (d) Except as provided in subdivisions (b) and (c), and in Section 1102, a spouse who is operating or managing a business or an interest in a business that is all or substantially all community personal property has the primary management and control of the business or interest. Primary management and control means that the managing spouse may act alone in all transactions but shall give prior written notice to the other spouse of any sale, lease, exchange, encumbrance, or other disposition of all or substantially all of the personal property used in the operation of the business (including personal property used for agricultural purposes), whether or not title to that property is held in the name of only one spouse. Written notice is not, however, required when prohibited by the law otherwise applicable to the transaction.

    So both spouses must sell the home, but it only takes one to sell the car, the bicycle, the bowling ball, or the patent rights. Whatever interest the other spouse has is automatically transferred without the requirement of an assignment by that spouse.

    Now. Demonstrate that I’m wrong, if you can.

  27. 36

    As ping, PPA andYAP rightly point out, while it is not at all unreasonable to view inventions, patent applications, and issued patents as property (and perhaps even ideas that fall somewhere between an idea and just short of an ARTP/CRTP), there is no easy answer for a myriad of reasons including, inter alia, the dual system of laws by states and the federal government.

    I am not in the slightest trying to advocate one or more of these as being property in the legal sense of the word (though it is useful to bear in mind that an important component of property is the right to exclude). What I am trying to do is merely highlight that the answer(s) are far from clear, due, in my view, to the simple fact that consistency in how they are treated is simply non-existent.

    The IRC says one thing (perhaps may things). The Secrecy Order provisions of Title 35 suggest something else. State law stirs the “property waters” into a muddy mess.

    What I hope is the take-away from this discussion is that there are no easy answers, and each situation presented by a client sitting across the desk from counsel must be analyzed on a case by case basis and without preconceived notions of what property actually is.

    BTW, and flinging a comment against the wall to see if it sticks, there as yet has not been a single Supreme Court case that has declared in anything other than dicta that issued patents are property for purposes of the 5th Amendment (or the 5th Amendment as applied to the states via the 14th Amendment).

  28. 35

    I get the timing question angle you are looking at Phoenix, – and the answer I supplied for the matrimonial law example works with the timing you put forth, too.

    Short answer: yes, there is property before a patent issues.

    Now mind you, that property may not be as valuable, but it is property nonetheless – any practicing lawyer who does more than prep and pros can tell you that. I done tell you the point – the point of reduction. Of course, this be different than the inception of the invention, but any invention that only exists in the mind’s eye is merely an abstraction.

    Mike’s argument about 261 is defensible and not total crrp, but nonetheless, the section needs to be looked at as a whole, and the deal about assignments and what not tell ya all ya need to know.

    YAP – Do some time in marital law – and you will see just how funny (and sad) your statement is.

  29. 34

    I think I see what you’re saying ping, but my post wasn’t really directed to the company K scenario.

    I’m talking about the court’s decision in this case. The court seems to essentially assume that the patent is CP because it was filed while they were married. Thus, it seems that the court is stating that a patent is characterized as CP/SP at the time of its filing date. I didn’t see that in the law the case cited, though.

    So my question really is one of timing. I think we can all agree that when the patent issues, it is clearly property. As Mike pointed out, 261 says “patents have the attributes of personal property,” but it doesn’t say they are property and it doesn’t say patent applications are property. So is there property before the patent issues? If yes, is there property before the application is even filed? Essentially, at what point does the invention go from an idea to actual property – that seems to the point at which the community property/separate property determination should be made.

    In Arizona (and I assume in CA also), to characterize property as SP/CP, you must determine when it was acquired/when there was inception of title. I’m not sure it is the filing date, but the court seems to take that for granted here.

  30. 33

    As to YAP – you done brought nothin home. You try to sell a home that someone owns an equal share to – you be in trouble big time.”

    Home. Car. Bicycle. Bowling ball. The $5 that you spent for lunch.

    Where’s the dividing line? Are you seriously suggesting that one spouse can reclaim any property that another spouse transfers without their consent, or that no property can be transferred without mutual asset? Demonstrate it.

    From what I can determine, California requires joint assent for real property, but allows unilateral action for personal property except 1. personal belongings and 2. transfers of all or substantially all of a business. I’m not a California lawyer, but it’s pretty clear that a spouse in California holds an interest in the value of most community-personal property, rather than title to any specific community-personal property.

  31. 32

    Phoenix,

    I don’t think anyone is doubting that the inventor has first rights.

    It’s what happens next that be interesting.

    marriage in some places = f(State Law) -> as soon as “invention” is reduced (paper or otherwise)
    -> spouse owns half.

    contracts in some places = f(State Law, how K is drawn) -> as soon as “invention” is reduced (paper or otherwise)
    ~> (may) company gets all (?) – or
    ~> (may)+ assignment -> company gets all (?)

    The conundrum is, where by law the spouse gets half, can the company even enforce the K, as instantaneously, the inventor does not own all.

  32. 31

    Mike and ping – I had the similar questions. The court flew by the analysis of the patents as community property. It notes the presumption that property acquired during marriage is CP and that here, because the apps were filed during marriage, they are CP. The court cites only two cases for this proposition. If you check those cases out, one is about copyright and the other is a 1935 patent case citing no law. Indeed, the 1935 case doesn’t actually come out and say that the patents at issue were CP because of their filing dates, but rather that the presumption they were SP was never rebutted (plus some commingling).

    I this is some shaky support for the notion that CP/SP ownership of a patent can be determined as of its filing date. While it isn’t state law, 35 USC 261 states that ownership initially vests in the inventors, not the applicants, and so seems to place (if but for just a moment before assignment papers are signed) the focus on the inventive activity / conception / RTP.

  33. 30

    If Fonda Whitfield was represented by an attorney when she signed that box and the attorney knew about the patent asset, she might still be able to get some of her community property back.

  34. 29

    Thanks Mike – a refreshing absence of snark deserves a cordial reply (well, as cordial as I can muster) – My observation is that “inventions” are not property until and unless they are reduced to practice and it is the reduction to pracice that evidences property. This can be a physical reduction to practice or a reduction by writing.
    I have partaked in business deals outside of pure IP that nonetheless included IP assets. Such assets were indeed deemed “property” – just as real as real property – and included patents, patent applications and invention disclosure forms.

    As to YAP – you done brought nothin home. You try to sell a home that someone owns an equal share to – you be in trouble big time. “offset by a corresponding transfer from the spouse by operation of law and virtue of the inventor’s ordinary ability to deal with marital assets” is pure malarky. you be assuming the very operation of law under discussion – that’s why it seems all nice and tidy for ya.

  35. 28

    260 should read 261. Late evening posts always run the risk of exacerbating poor typing skills.

    Thank you for the correction.

    As for “Even when that “act” is the transfer of property?”, yes. It is a covenant to at some future date execute relevant documents. Breach the covenant and specific performance is a viable contractual remedy.

    Yes, 261 (as you correctly note), second paragraph, specifically provides that applications and patents are assignable, but does not include “inventions” and “applications” in the first paragraph associating patents and “personal property”.

    In a similar vein, if I recall correctly the IRC treats prepatent activities as business expenses, but treats patents themselves as depreciable assets, a hallmark of “property”.

    262, as you correctly point out, does speak to sales of that which is covered by a patent without consent and without accounting.

    What I should have stated is that under longstanding common law principles it is my understanding that a co-owner is generally free, in the absence of an agreement to the contrary, to transfer his/her ownership interest, in whole or in part, to a third party without consent of the other owners and without accounting for the proceeds of such sale.

    My above failings notwithstanding, there still remains the question about what, as between an invention, application, and patent, legitimately comprises “property”?

  36. 27

    This discussion has wandered quite far afield, so let’s bring it back home:

    The ownership of an invention conceived and developed by a married employee within the scope of employment is probably not that interesting. Whether you believe that the employee ever ‘owned’ the invention so as to make it property of the marriage or not, the spouse would only retain rights to the invention if the State required that the spouse assent to an ordinary transfer of property to a third party.

    I’m not a domestic relations attorney, and obviously the rules can change by decree in the context of a divorce proceeding (to prevent shenanigans). However, I am not aware of any State that requires written asset from one spouse, or will unwind a non-fraudulent transaction if there was no assent, in order for the other spouse to transfer property to a third party. I doubt that there is such a requirement, unless it is for very particular assets like the marital residence, because in general such a system would be unworkable.

    This case arose because the inventor was not an employee. The timing makes things just interesting enough to merit discussion, since the inventor owned the patents at the time of the divorce, rather than having sold them or transferred them to a business entity. Otherwise, I would argue that any transfer of a share to the spouse by operation of law is offset by a corresponding transfer from the spouse by operation of law and virtue of the inventor’s ordinary ability to deal with marital assets. The proper thing to do is to check with a domestic relations attorney rather than discuss sections of title 35 that do not preempt transfers by means other than assignment (e.g., merger, inheritance, etc.).

  37. 26

    35 USC 262 quite interesting as it pertains to transfers of jointly owned patents

    Just an observation, but 262 does not pertain to transfers of jointly owned patents – “may make, use, offer to sell, or sell the patented invention” – the patented invention is not the same as the patent.

    What this section does pertain to is giving free reign for joint owners to do what they want and not have to give an accounting to the other joint owners. So “my brain hurts” may be on to something with the husband (or wife) trying to sell (or license to make or import) the entire title, but the working spouse’s portion of the title can be traded away.

    Leave it to California to muck up the waters, eh Malcolm?

    Mikey, what version of the law are you looking at – I don’t see a Section 260 on the USPTO site and google does not give me anything. The Office version begins 261 with “Subject to the provisions of this title, patents shall have the attributes of personal property.” – Is that what you are referring to? If so, I think ya gotta read that first line in context with the rest of the section.

  38. 25

    very difficult time associating a covenant to perform an act in the future as somehow constituting a transfer of “property”.

    Even when that “act” is the transfer of property?

  39. 24

    As an addendum to my above comment, Section 260 does provide that a patent has the “attributes” of property. There is no suggestion that an application, or even an invention, enjoys the same status.

    Yes, Section 261 does speak to the transfer of applications and patents by assignment, but I do find it noteworthy that applications are nowhere mentioned in Section 260.

    While not necessarily relevant to the employer/employee relationship, I also find the provisions of 35 USC 262 quite interesting as it pertains to transfers of jointly owned patents. Of course, this raises a complete “can of worms” where state community property laws may come into play.

  40. 23

    The discussion appears to have strayed from the facts associated with the case (two patents issued during the marriage) and moved into the realm of “who ‘owns’ inventions”, as the term “invention” is defined in Section 100, and as limited by Section 101 as to what is eligible for the possible grant of a patent.

    Perhaps it helps to consider a more fundamental question. Clearly, a patent that has issued can be argued as comprising “property”, and as “property” acquired during a marital relationship in a community property state may be viewed as community property.

    As I see it, however, can it truly be said that a “naked” invention is “property”, much less “property” as to which community property laws apply? I suggest that the answer is far from clear, even though “conventional wisdow” has hitherto assumed that the answer to the question in the affirmative.

    Carrying this forward to an employee/employer relationship, just what exactly is being transferred? This is what I have always viewed as a major failing of the vast majority of employer/employee agreements (something not altogether unexpected given the propensity of most business to lift language out of form books or the like).

    These agreements are mere contracts, and subject to the rights and remedies afforded under applicable state law. I, for one, have a very difficult time associating a covenant to perform an act in the future as somehow constituting a transfer of “property”.

  41. 21

    From a slightly different angle…

    IF (and by no means certain), the marriage happened first and IF (ditto) both are considered contracts of equal nature…

    Does the husband even have a legal right to transfer the entire title to the company? Or would such clause in an employment contract (again IF marriage is first) be fatally flawed?

  42. 20

    IANAE, you might be right about the technical sequence, but I was jumping to the chase on the ultimate question of who owns the rights. Yes, the typical employment contract only obliges the employee to assign the inventions to the employer. Until that assignment, the employee inventor has legal title to the patent rights.

    Still, the spouse’s claim to any invention is equitable in nature. With the standard employment contract, the inventor spouse never had an equitable interest in the patent rights — just bare legal title. The other spouse cannot make an equitable claim on the inventor spouses nonexistent equitable ownership in the patent rights.

  43. 19

    Delving into contract law, wherein a future promise (from the company) for rights of something (bythe worker) that may not ever exist will still run into the same issue because marriage is likewise a contract recognized by the state and the same type of future promise for rights of something that may nor ever exist applies.

    Basicly, you have two matching future promises.

    Ah, they say a man cannot have two masters…

  44. 18

    In some countries/(and states?) by operation of law first owner is the employer. This might be possible to duplicate with a contract that automatically assign future rights.

    In such a case the time line is employee assigns future rights, employee conceives invention, employer owns invention, employer gets around to getting employee to sign a document confirming employer owns said invention for registration before various patent offices. Employee/inventor never having owned the invention, could not have co-owned with spouse.

  45. 17

    There, the employee never owned any of the property rights at issue, so the spouse couldn’t have any interest in those rights, either.

    Are we absolutely sure about that?

    It’s not strictly accurate on those facts to say that the employee never owned any of the property rights at issue, because the employee is assigning the rights to the employer by contract. Technically, the timeline that instantaneously transpires is [conception]–>[inventor owns]–>[inventor assigns to employer]–>[employer owns].

    But as soon as the employee instantaneously owns the rights to the invention during his marriage, does his wife not take half by operation of law? Or do we allow such third-party contracts to defeat the community property framework?

  46. 16

    Just when you thought there were no new material issues in the patent field of art, Whammo …

  47. 15

    Interesting question, Richard. I think companies are in the clear where an employee conceives of the inventon within the scope of his/her employment, and the standard invention assignment language is in the employment agreement. There, the employee never owned any of the property rights at issue, so the spouse couldn’t have any interest in those rights, either.

    It would be a lot more complicated, though, where conception and reduction to practice occurred in the absence of or prior to such a standard employment agreement. I suspect you are right that counsel might be overlooking this potential problem in many situations.

  48. 14

    Malcolm’s from sunny California, Let’s ask him,
    Hey Malcolm, how do those worms taste?

    getting those worms…I’m not going to try it

    “Let’s ask Malcolm! Yeah. He won’t eat it – he hates everything.”

    “He likes it! Hey Malcolm!”

  49. 13

    I have to believe that there was in fact community property (certainly they bought things while they were married), but they decided not to formally divvy it up because it wasn’t all that important to them or they had reached an amicable agreement among themselves (and the wife probably wasn’t aware of her interest in the patents at the time or didn’t care). So they were free to agree that there was no community property, which seems reasonable to me especially in a quicky divorce. Done deal, unless the husband fraudulently induced the wife to check that box.

  50. 12

    If an invention is owned by the inventor at the time of conception, and the inventor is married, and all assets acquired during marriage are community property, then I assume that a spouse automatically gets an interest in the invention.

    What if the inventor’s employer also owns the invention at the time of conception, either by contract or by operation of law? Who takes first, the spouse or the employer? Does it matter which party the inventor contracted with first?

    And how do I get all these worms back in this can? I could swear they all fit in there before.

  51. 11

    If an invention is owned by the inventor at the time of conception, and the inventor is married, and all assets acquired during marriage are community property, then I assume that a spouse automatically gets an interest in the invention.

    Does this mean that a company should get both the inventor and the spouse to sign the assignment documents at the time of filing? Should the standard employment forms that assign inventions to the company also include a signature from the spouse?

    This seems to be a huge hole in traditional corporate practice.

  52. 10

    Having been thrice divorced, this is one of those rare decisions the beauty of which brings tears to my weary, jaded, old eyes.

    Thrice divorced? Goodness, BB. That brings to mind the old saying, “Fool me once, shame on you; fool me twice …” :)

  53. 9

    (Ms. Whitfield assigned her rights to Sprint.)

    I just about sprayed coffee on my monitor when I read that in the opinion. Can you imagine?! Apparently these former spouses are not Facebook friends. I wonder how much money they paid her.

  54. 8

    Having been thrice divorced, this is one of those rare decisions the beauty of which brings tears to my weary, jaded, old eyes.

    She joined in a document asserting there were no community assets and then went after a bite of the husband’s patent. peeyou.

  55. 6

    Without citing specific California law, the Federal Circuit held that that the final divorce decree coupled with this box-checking stripped Whitfield of her community property rights in the patent.

    That’s probably the fault of whichever party the California law actually favored, for not citing the law in its pleading before the Circuit.

    I predict that someday a chosen patentee will restore balance to divorce.

  56. 4

    Defendants apparently waived claim construction by never asking the district court to construe several terms and not making issue of any unresolved ambiguity before or during trial:

    link to grayonclaims.com

  57. 2

    Wow, this guy successfully sued on those piles. I never would have thought that possible. Here are some of my favorite parts of claim 1:

    “A satellite paging communication system with means to locate the global position of a call re-ceiver unit comprising:” – love that means+function in the preamble.

    “space satellites and terrestrial stations, some of which are adapted for the purpose of transmitting paging information and some of which, are adapted for the purpose of transmitting positioning information;” – what’s with the comma after the second “which”? Note the two forms of information, paging and positioning, because…

    “ground control stations for processing the said information and controlling the actions of the paging network;” – I also love “the said” which is repeated through many claims. Why didn’t the examiner at least point out to the pro se applicant that it’s redundant? Anyway, which “the said information” would that be, paging information, positioning information, both?

    “the call receiver or pager having means to resolve a global position from satellites or earth based communication means;” – um, what pager?

    “the system divulging to certain or all callers the global location of a callee in possession of the said call receiver while blocking such information from being divulged to certain or all other callers.” We’ve slipped into a method step here.

  58. 1

    Wow. In order to overcome the presumption of community property, I would have thought that a court would require something more than “checking a box” to show that the parties converted community property to separate property. I wonder what Gloria Allred thinks about this holding from a Federal Appeals Court.

    Sprint gets a “nice try” for buying the ex-wife’s interest, if any. Hope Sprint didn’t pay too much.

    Practice note: Watch out for the property right issues related to civil unions and registered domestic partnerships. Under the new Nevada domestic partnership law, if two people register and stay together for five years, they have to get a court divorce to break up the partnership.

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