AN ASSIGNMENT OF SOFTWARE DEVELOPMENT COPYRIGHTS MAY NOT IMPLY AN ASSIGNMENT OF PATENT RIGHTS IN THE SOFTWARE

JAMES v. J2 CLOUD SERVICES, LLC, Appeal No. 2017-1506 (Fed. Cir. April 20, 2018).  Before Reyna, Taranto, and Hughes.  Appealed from C.D. Cal. (Judge Snyder).  (Inventorship Rights)

Background:

James was a software developer hired by JFAX Communications to develop software for converting facsimiles to emails.  The terms of the development of this software were dictated by a Software Development Agreement (“SDA”) between JFAX and a company called GSP Software, which was affiliated with James.  The SDA stated that GSP “will develop software solutions for the exclusive use of JFAX,” and expressly required the assignment to JFAX of “all copyright interests” in the developed “code and compiled software.” James alleged that he developed and delivered the software under the SDA, and that JFAX did not assist him in developing the software.

Without James’ knowledge, JFAX obtained a patent based on the software (“the ‘638 patent”) directed to systems and methods for converting facsimiles to emails.  Two JFAX employees were listed as the only inventors of the ‘638 patent.  J2 Cloud Services inherited the rights to the ‘638 patent, and James learned of the ‘638 patent when he was contacted by an accused infringer in a separate lawsuit.

James filed a complaint requesting correction of inventorship under 35 U.S.C. § 256.  The District Court dismissed the claim for lack of standing.  Specifically, the District Court ruled that even if James were an inventor, he had assigned, or obligated himself to assign, his patent rights to JFAX.  The District Court relied on two related sources for that conclusion: (1) the SDA; and (2) the “hired-to-invent” doctrine.  James appealed.

Issues/Holdings:

Did the District Court err in dismissing James’ claim for lack of standing?  (continue reading)

Summary by:  Brian Repper

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