Employee Invention Assignments Given an About Face

March 31, 2008

By: David J. Brody

New England In-house

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The following article appeared in New England In-House:

The Federal Circuit Court of Appeals has “reached out” to employee invention assignment agreements, ruling they should be interpreted under federal law, not under the state law that governs other clauses in the same agreement.

The decision, DDB Technologies, LLC v. MLB Advanced Media, LP (Fed. Cir. No. 2007-1211, Feb. 13, 2008), will likely strengthen employers’ rights, and warrants review of these agreements that define critical aspects of employer-employee relationships.

The case involved an employee (Barstow) of Schlumberger, the oil field services company, who signed an employee assignment agreement providing that he “agrees to and hereby does grant and assign” to Schlumberger all inventions, whether patentable or not, that he might make while employed by Schlumberger that “relate in any way” to Schlumberger’s business, or that “are suggested by or result from” his work for Schlumberger.

While employed by Schlumberger, Barstow made inventions related to computer simulation of live baseball games for display on a viewer’s computer. He brought his inventions to the attention of Schlumberger’s inhouse counsel and lab director, both of whom concluded that the inventions did not come under Barstow’s invention assignment obligations.

Nevertheless, when Barstow sued Major League Baseball for infringement of the patents 10 years later, MLB approached Schlumberger and induced it to assign its rights in the patents to MLB.

MLB then filed a motion to dismiss the Barstow lawsuit because, as an owner of the patents, it could not be sued for infringement.

 To read the full article, please visit the New England In-House website.

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March 31, 2008

By: David J. Brody

New England In-house

View Link

The following article appeared in New England In-House:

The Federal Circuit Court of Appeals has “reached out” to employee invention assignment agreements, ruling they should be interpreted under federal law, not under the state law that governs other clauses in the same agreement.

The decision, DDB Technologies, LLC v. MLB Advanced Media, LP (Fed. Cir. No. 2007-1211, Feb. 13, 2008), will likely strengthen employers’ rights, and warrants review of these agreements that define critical aspects of employer-employee relationships.

The case involved an employee (Barstow) of Schlumberger, the oil field services company, who signed an employee assignment agreement providing that he “agrees to and hereby does grant and assign” to Schlumberger all inventions, whether patentable or not, that he might make while employed by Schlumberger that “relate in any way” to Schlumberger’s business, or that “are suggested by or result from” his work for Schlumberger.

While employed by Schlumberger, Barstow made inventions related to computer simulation of live baseball games for display on a viewer’s computer. He brought his inventions to the attention of Schlumberger’s inhouse counsel and lab director, both of whom concluded that the inventions did not come under Barstow’s invention assignment obligations.

Nevertheless, when Barstow sued Major League Baseball for infringement of the patents 10 years later, MLB approached Schlumberger and induced it to assign its rights in the patents to MLB.

MLB then filed a motion to dismiss the Barstow lawsuit because, as an owner of the patents, it could not be sued for infringement.

 To read the full article, please visit the New England In-House website.

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