Consultant’s Rights to Invention Outside of Agreement

In TriReme Medical LLC v. Angioscore, Inc., 2015-1504 (Fed. Cir. 2016)(Available Here), the Federal Circuit remanded the case back to the District Court for a factual determination of whether the consultant’s (Dr. Lotan) continued work on the AngioSculpt device after the effective date of his Consulting agreement caused the invention to come within Section 9(b) requiring the assignment of inventions during term of agreement.

    Angioscore owns certain patents covering its AngioSculpt product, which is an angioplasty balloon catheter.  TriReme, a competitor, has an assignment from Dr. Lotan and brought suit to correct inventorship on the AngioSculpt patents to include Dr. Lotan.  The District Court dismissed for lack of subject matter jurisdiction holding that any interest Dr. Lotan may have had in the patents was assigned to Angioscore under the Consulting Agreement.

    Before the effective date of the Consulting Agreement, Dr. Lotan performed a single day study testing AngioSculpt prototypes in pig arteries.  From this study, Dr. Lotan prepared a memorandum in which he recommended that the unattached end of the catheter be better secured.  The Angioscore patents include an attachment structure similar to that recommended by Dr. Lotan.  Dr. Lotan did not include this study in Exhibit C to the Consulting Agreement, which was a list of inventions excluded from the license portion of the agreement.  Dr. Lotan did not include the study because he did not consider it an invention at the time.

    The Federal Circuit found that the District Court erred in relying on Section 9(a) of the Consulting Agreement titled “Inventions retained and licensed” when the District Court found that Dr. Lotan assigned his rights to Angioscore.  At most, Section 9(a) grants Angioscore a non-exclusive license in the event that the consultant incorporates a prior invention into an Angioscore product during the term of the Consulting Agreement.  This was contrary to Angioscore’s arguments that it acquired rights to all of Dr. Lotan’s prior inventions, because they were not listed in Exhibit C as excluded inventions.      

    It was undisputed that while Dr. Lotan no longer worked on the physical design of the catheter after the effective date, he continued talking with Angioscore, performing work related to designing, implementing and analyzing clinical trials.  The parties dispute whether this amounts to “conceiving,” “developing,” or “reducing to practice” an “invention” “development” or “improvement,” which could bring the invention under Section 9(b) of the agreement requiring an assignment.  The Federal Circuit remanded the case for the District Court to determine if Dr. Lotan’s continued work on the AngioSculpt after the effective date came within Section 9(b) “Assignment of inventions.”

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