Plaintiff has standing to bring infringement action
St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., et al., Civil Action No. 06-404-JJF-LPS, May 4 , 2009.
Stark, M. J. Magistrate recommends that the Motions for Jurisdictional Discovery and Hearing and to Dismiss for Lack of Subject Matter be denied and The Motion for Leave to File a Surreply is granted.
The patents-in-suit claim a digital camera that allows the formatting of photographic images in a choice of file formats, such as TIFF, JPEG and MPEG. Plaintiff filed this action against Defendants alleging infringement of the patents-in-suit which action was stayed pending resolution of a related California case. Shortly after settlement of the California litigation, the stay was lifted and Defendants filed the Motions to Dismiss contending that Plaintiff is not the true owner of the patents-in-suit. Defendants do not contest that Plaintiff has owned the patents-in-suit since the California settlement. However, Defendants contend that prior to that assignment; the patents were owned first by the inventors’ employer, as a result of an automatic assignment provision in the inventors’ employment agreements (the “Employment Agreements”). Defendants contend that because Plaintiff did not own the patents at the time it commenced this action, it lacks constitutional standing to pursue this action. In the alternative, Defendants seek jurisdictional discovery in aid of establishing Plaintiff’s lack of standing prior to the resolution of the merits of this infringement action. In reaching its decision the Court looks to the language of the Employment Agreements. No jurisdictional discovery is warranted where the agreements are unambiguous. In addition, the Employment Agreements do not contain present language automatically transferring to the employer all rights, title and interest to the patents-in-suit. Without such present language of assignment, the patents-in-suit were not automatically assigned to the inventors’ employer by operation of the Employment Agreements. Therefore, the Employment Agreements do not present an impediment to Plaintiff’s ownership of the patents-in-suit and Plaintiff has standing to bring this action. Thus the Magistrate recommends denial of Defendants’ Motions to Dismiss.
