Consulting agreement provided standing to bring suit
Affymetrix, Inc. v. Illumina, Inc., No. 04-901-JJF, Aug. 16, 2006.
Farnan, J. Defendant’s motion to dismiss count II relating to U.S. Patent No. 5,795,716 because of lack of title to the ‘716 patent and therefore lack of standing was denied.
The invention claims a computer system for analyzing nucleic acid sequences. Defendant claims the inventor of the ‘716 patent assigned his rights in the patent to his employer Wagner Associates, Inc. and that those rights were never assigned to plaintiff. The court found that a consulting agreement gave plaintiff the right to ownership of the invention. It rejected an argument that the consulting agreement did not effectuate a present transfer of proprietary rights from Wagner. The court construed California state law, finding that the evidence offered supported an understanding of present transfer with no additional act needed for transferring the rights to the invention.
