Friday, August 6, 2010

First comes marriage, then comes conception, next we're fighting about who owns patent rights.

As this is an intellectual property blog, your mind quickly and correctly thought of the act of conceiving an invention when you read the above title.  Good work.  This is a pretty exciting post for me to write.  My brother, Frederick Pollack, is a family law attorney here in Tampa.  I'm a patent attorney.  Our fields don't cross that much.  I've joked with him that they should.  Well, they did.  And you, lucky reader, get to learn how.

You'll recall that under the American patent system, you need to overcome two hurdles to "invent" something.  First, you must conceive it.  Then, you must reduce it to practice.  Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.  Reduction to practice, as you might guess, is reducing that thing to practice.  You can do that in one of two ways: (1) actually do it; or (2) constructively do it.  You constructively reduce an invention to practice by filing a patent application which sufficiently describes your invention to enable one of skill in the art to practice it.  So what's this got to do with marriage?  Read on.

Some time before 1997, Mundi Fomukong and Fonda Whitfield were married in California.  In 1997 (the year I got married, btw), Fomukong conceived a way to use GPS and ground control stations to determine the location of someone, and disclose that location only to certain users.  On June 29, 1999, Fomukong (and his co-inventor) were awarded U.S. Patent 5,918,159 for this invention.  A few months earlier, he filed a continuation-in-part application.  In 2001, Fomukong and his wife Whitfield filed for divorce in California.

They did a "quickie divorce."  Under California law, this meant the couple must either have no community property, or have signed a property settlement agreement listing and dividing all of their community assets and liabilities.  Presumptively, everything you acquire during your marriage in California is community property.  Fomukong and Whitefield told the state of California that they had no community assets or liabilities.  In October, 2002, their divorce became final.  Several months later, Fomukong's second patent application (the continuation-in-part application) issued as U.S. 6,560,461.  He then formed a company (Enovsys) and assigned the patents (and the right to sue for past infringement) to the company.  Enovsys then sued Sprint Nextel for infringing the patents.

I will ignore the infringement issues in this decision, and instead just focus on the standing issue.  Sprint Nextel sought to dismiss the complaint, arguing that Enovsys did not have standing to sue for patent infringement.  The Court explained standing:
A party’s standing to sue for patent infringement derives from the Patent Act, which provides that “[a] patentee shall have remedy by civil action for infringement of his patent.” 35 U.S.C. § 281 (emphasis added). “Patentee” includes not only the party to whom the patent was issued, but also the successors in title to that party. 35 U.S.C. § 100. When a patent is co-owned, a joint owner must join all other co-owners to establish standing.
So, did Enovsys have to join Whitfield (Fumoko's ex-wife) as a plaintiff?  Sprint's argument: Fumoko filed both patent applications while he was married.  Presumptively, all assets acquired during marriage are community property.  This ownership survived the divorce, and thus Whitfield was an owner of the patents and needed to be joined in the litigation.  Enovsys's response: the divorce judgment constituted a final determination by the state of California -- Fumoko and his wife didn't own anything as community property anymore.

The Court went on to address California state law on this issue, and held that Enovsys was right.  Fumoko and his wife stated at the time of their divorce that they didn't own any community property.  So that's how it ends up.
Pursuant to the California divorce decree, Whitfield retained no property rights in the patents, so Enovsys had standing to bring and maintain this suit.

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