Recordation of Patent Assignment at the PTO Created a Presumption of Validity of the Assignment
April 12, 2010
Last Month at the Federal Circuit - May 2010
Judges: Michel, Clevenger, Dyk (author)
[Appealed from: ITC]
In SiRF Technology, Inc. v. International Trade Commission, No. 09-1262 (Fed. Cir. Apr. 12, 2010), the Federal Circuit affirmed the ITC’s finding of infringement and held that patent assignments at the PTO are to be given a presumption of validity. The Court also held that the ITC’s finding of direct infringement of method claims was proper where the acts of third parties were not required by the claim language. Finally, the Court held that tying claims directed toward GPS calculations performed by a GPS device was directed to patentable subject matter.
Global Locate, Inc. and Broadcom Corp. (collectively “Global Locate”) own U.S. Patent Nos. 6,417,801 (“the ’801 patent”), 6,606,346 (“the ’346 patent”), 6,651,000 (“the ’000 patent”), 6,704,651 (“the ’651 patent”), 6,937,187 (“the ’187 patent”), and 7,158,080 (“the ’080 patent”). These six patents generally relate to calculations performed on GPS receivers to determine a receiver’s location from GPS satellites and Assisted-GPS broadcasts. Global Locate accused two lines of SiRF Technology, Inc.’s (“SiRF”) GPS microchips of infringement in the ITC along with several end-user devices that incorporate these chips. The ITC found that all six patents were infringed, not invalid, and not unenforceable.
On appeal, the Federal Circuit first addressed SiRF’s argument that Global Locate lacked standing to assert the ’346 patent. SiRF alleged that Magellan Corporation (“Magellan”) was co-owner of the ’346 patent by way of an assignment clause found in an employment agreement of one of the coinventors. While employed at Magellan, one of the coinventors of the ’346 patent conceived of the subject matter of the patent. The employment agreement stated that the employee assigns to Magellan all inventions that were “related to or useful” in the business of Magellan and that were conceived during the period of employment, whether or not in the course of employment. Therefore, SiRF alleged that Global Locate lacked standing to assert the ’346 patent due to a lack of joinder of all co-owners of the patent.
Both parties agreed that Global Locate had the burden to establish standing. To do so, Global Locate submitted the patent assignment record at the PTO, showing that Global Locate was assignee of the patent in question. The Court held that the recorded assignment is not a determination as to the validity of the assignment but creates a presumption of validity as to the assignment and places the burden to rebut such a showing on the one challenging the assignment. The Court stated that such a rule is consistent with and supported by 35 U.S.C. § 261, which provides a defense for a bona fide purchaser for value against a subsequent purchaser when the assignment is recorded in the PTO within three months of the purchase or before the subsequent purchase. With the burden shifted to SiRF, the Court found that substantial evidence supported the ITC’s determination that SiRF had not sustained its burden.
The Court found that because the phrase “related to or useful in” was inherently ambiguous, it was proper to look to the parties’ own interpretation of this language as determinative. Magellan had filed a trade-secret suit against the former employee, which ended with Magellan concluding that it had no rights in any subject matter that overlapped with the present suit. Thus, the Court affirmed the ITC’s determination that because Magellan concluded that it had no ownership interest in the invention, there was no evidence to suggest that the invention was “related to or useful” in the business of Magellan.
The Court next addressed the ITC’s determination that SiRF had directly infringed claims in the ’651 and ’000 patents. SiRF argued that some steps were necessarily done by third-party end users and that joint infringement failed because SiRF did not direct or control the actions of the end users. The Court disagreed, finding the claims as written did not require any action by a third party and, thus, the ITC properly found SiRF to be a direct infringer.
Finally, the Court addressed whether the asserted claims in the ’801 and ’187 patents recited patentable subject matter. In its de novo review of the issue, the Court used its Bilski framework—that a claimed process is patent eligible if (1) it is tied to a particular machine or transforms a particular article into a different state or thing, and (2) “the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility.” Slip op. at 21 (quoting In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 129 S. Ct. 2735 (2009)). The Court found that a GPS receiver is a machine and is integral to the methods at issue, and that the methods claimed could not be performed without a GPS receiver.
The Court further found that the presence of the GPS receiver in the claims placed a meaningful limit on the scope of the claims. The Court explained that “[i]n order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” Id. at 22. Thus, the Court held that the claims at issue were properly directed to patentable subject matter as they explicitly required the use of a particular machine (a GPS receiver) and could not be performed without the use of such a receiver.
Summary authored by Troy L. Gwartney, Esq.