One Challenging Patent Assignment Has the Burden to Rebut the Validity of Assignment

SiRF Tech., Inc. v. Int'l Trade Comm'n, No. 2009-1262 (Fed. Cir. Apr. 12, 2010).

Holding:

One challenging the patent assignment has the burden to rebut the validity of assignment. Slip op. at 12.

Relevant Facts:

Global Locate owns several patents related to GPS technology. The International Trade Commission found that SiRF infringes Global Locate’s patents. Among several issues, SiRF challenges Global Locate’s standing to sue. Specifically, one inventor worked at a third party company Magellan and under his employee inventions agreement, he had the obligation to assign Magellan “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.” Slip op. at 9. The Commission found that the invention was not “related to or useful in the business of the Employer.” The Federal Circuit affirmed the Commission’s decision.

Comments:

The question of standing to assert a patent claim is jurisdictional, and the Federal Circuit reviews this question de novo. Because the patents were assigned to Global Locate, however, the burden of proof on this issue rested with the challengers. The Federal Circuit affirmed the Commission’s factual determination under the “substantial evidence” standard, finding that the challengers have not sustained their burden is supported by substantial evidence. Slip op. at 13.