Articles Posted in Federal Circuit

The assignment provisions in employment agreements have taken on added importance with recent case law from the Federal Circuit. The Federal Circuit’s decision in Stanford University v. Roche, 583 F.3d 832 (Fed. Cir. 2009), drew a sharp distinction between language in assignment provisions focusing on the difference between “agree to assign” and “do hereby assign,” with the former constituting a mere agreement to assign in the future, which is ineffective absent an additional agreement to assign intellectual property that is created in the future.

Read a more detailed description here: Protect Your Intellectual Property: Draft Employment Agreements Carefully.

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On April 1, 2011, the Federal Circuit issued another decision regarding the written description requirement. In Crown Packaging v. Ball Metal, No. 2010-1020 (Fed. Cir. April 1, 2011), the Federal Circuit analyzed a district court’s decision holding that certain claims of the Crown patent were invalid for violating the written

description requirement.

The patent at issue pertained to an invention for seaming metal cans. The district court held that the asserted claims covered driving a chuck either inside or outside of the reinforcing bead for seaming the can, but the specification only supported driving a chunk outside of the can end’s reinforcement bead. Thus, according to the district court, the specification did not support the claims in the patent because the specification only taught “outside,” while the claim covered both “outside” and “inside.” The patent therefore was invalid.