Talk:Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)

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Maura

It is well settled in this court that a party seeking a preliminary injunction must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest.

It is important to keep in mind that the issue before us is not who should ultimately be held to have title to the patent, but whether, in view of the state of the title, it can be said that FilmTec has a reasonable likelihood of success on the merits of that issue, sufficient to warrant the grant of the preliminary injunction.

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,3 they are by definition personal property.4 While early cases have pointed to the myriad ways in which patent rights--that is, property in patents--are closer in analogy to real than to personal property,5 the statutes establish as a matter of law that patents today have the attributes of personal property.6 And 35 U.S.C. Sec.261 makes clear that an application for patent as well as the patent itself may be assigned.7 Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under Sec. 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. Sec. 1498 (1988).

Because of the district court's view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

C.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule. Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

Courtney

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. § 1498 (1988).

The question of FilmTec's right to maintain the action against Allied should not be confused with the question of whether Allied could defend by arguing that title to the patent was in a third party-the Government-and therefore Allied has a good defense against any infringement suit. The plea in jus tertii (title in a third person) as it was known at common law was held in some early cases to be a good defense to a possessory action, although more recent cases reject the defense and allow recovery on a prior possession.[9] But the issue here is not whether title lies in the Government or some other third party; it is rather whether FilmTec has made a sufficient showing to establish reasonable likelihood of success on the merits, which includes a showing that title to the patent and the rights thereunder are in FilmTec.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

Kevin

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532. Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule. Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.