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Court Affirms Order Requiring Graduate Student to Assign Rights to University

January 30, 2002

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Last Month at the Federal Circuit - February 2002

Judges: Lourie (author), Rader, and Gajarsa

In University of West Virginia v. VanVoorhies, No. 00-1440 (Fed. Cir. Jan. 30, 2002), the Federal Circuit upheld a district court’s decision to grant SJ to the University of West Virginia’s Board of Trustees (“WVU”), holding that Mr. Kurt VanVoorhies breached his duty to assign two U.S. Patent Applications to WVU and requiring execution of an assignment to WVU of those applications and the issued patents based thereon. The Court also affirmed the district court’s decision to grant SJ to WVU over VanVoorhies’s claims of fraud, breach of fiduciary duty, breach of contract, and invalid assignment as well as the district court’s dismissal of VanVoorhies’s quasi-contract claims and his claim under the Racketeer Influenced and Corrupt Organizations Act (“RICO”). Additionally, the Court affirmed the denial of VanVoorhies’s motions to disqualify WVU’s counsel, compel discovery, and vacate the stay of a consolidated case.

In 1990, VanVoorhies enrolled in graduate school at WVU to work with a particular professor, Dr. Smith, and pursue a Ph.D. in engineering. Soon thereafter, VanVoorhies submitted an invention disclosure form to WVU describing an invention for a contrawound toroidal helical antenna (“the first invention”) and listing Smith as a coinventor. At trial, Smith testified that he had discussed WVU’s patent policy with VanVoorhies before submitting this invention disclosure. Under this policy, the University owns worldwide right, title, and interest in any invention made at least in part by University personnel or with substantial use of University resources. The policy defined “University personnel” as all full-time and part-time members of the faculty and staff, and all other employees of the University, including graduate and undergraduate students and fellows of the University. The policy also stated that the inventor shall cooperate fully with the University in all respects, such as in the preparation, filing, and transfer of rights to any invention covered by the policy.

In November 1992, VanVoorhies and Smith, as coinventors, filed a U.S. Patent Application Serial No. 07/992,970 (“the ‘970 application”) to the first invention. They also executed a written assignment of all rights to this invention to WVU. This assignment stated that it covered all CIP applications relating to the first invention.

On December 29, 1993, VanVoorhies received his doctoral degree from WVU. VanVoorhies asserted that he then invented a half-wave bifilar contrawound toroidal helical antenna (“the second invention”) before beginning his work as a postgraduate Research Professor at WVU on February 1, 1994. In a letter dated October 5, 1994, however, VanVoorhies, who became a registered patent agent that same month, requested WVU to file a CIP of the first application directed to the second invention. He also forwarded a preliminary invention disclosure to WVU’s patent counsel and urged WVU to obtain patent protection on the second invention. WVU’s patent counsel then sent VanVoorhies a patent application with a corresponding declaration and assignment, but VanVoorhies did not respond.

In June 1995, WVU filed U.S. Patent Application Serial No. 08/486,340 (“the ‘340 application”) directed to the second invention, even though VanVoorhies refused to execute this application. WVU designated the ‘340 application as a CIP application of the first application and listed VanVoorhies as the sole inventor. In August 1995, however, VanVoorhies filed U.S. Patent Application Serial No. 08/514,609 (“the ‘609 application”), which was directed to the same subject matter as the second invention. Unlike the ‘340 application, the ‘609 application was not designated as a CIP of the ‘970 application.

In August 1997, WVU brought suit against VanVoorhies, asserting that he had breached his duty to assign the second invention to WVU. In response, VanVoorhies filed an extensive array of counterclaims, including breach of fiduciary duty, breach of contract, fraud, as well as RICO and implied contract claims. VanVoorhies also sought a declaration of invalidity of the assignment of the first invention. Before trial, WVU moved for SJ that VanVoorhies breached his duty to assign the ‘340 and the ‘609 applications to WVU. The district court granted SJ, concluding that the ‘340 application was a CIP of the ‘970 application and, therefore, subject to the assignment of the first invention.

On appeal, VanVoorhies argued that the district court had erred in granting SJ that he had breached his duty to assign the ‘340 and ‘609 applications to WVU. Specifically, VanVoorhies contended that WVU had improperly designated the ‘340 application a CIP of the ‘970 application since the second invention was an independent and distinct invention, and, thus, was not subject to the CIP provision of the assignment concerning the first invention. VanVoorhies also asserted that the ‘609 application was not subject to assignment to WVU under the WVU’s patent policy because he did not conceive the second invention while being associated with WVU.

The Federal Circuit disagreed, concluding that the ‘340 application constituted a CIP application of the ‘970 application for at least three reasons. First, the ‘340 application fell within the PTO’s definition of a CIP application because it was filed during the pendency of the ‘970 application, repeated some of the subject matter of the ‘970 application, and added an arrangement of elements not present in the ‘970 application. VanVoorhies himself, the Court noted, was also a common inventor to both applications. Second, the PTO accepted the ‘340 application without the signature of the inventor based on its review of the CIP provision contained in the assignment of the ‘970 application. Third, the fact that VanVoorhies himself, as a licensed patent agent, had urged WVU to file a CIP application for the second invention provided compelling evidence that the ‘340 application was a CIP of the ‘970 application. Accordingly, the Court affirmed the district court’s order requiring VanVoorhies to assign the ‘340 CIP application to WVU because he breached his duty by refusing to do so.

With respect to the ‘609 application, the Court also held that the district court had not erred in granting SJ on VanVoorhies’s failure to assign this application to WVU. In opposition to WVU’s motion for SJ, VanVoorhies had presented some evidence that consisted of several unwitnessed and unbound log book pages from January 1994 that tended to show that he conceived the second invention after receiving his doctoral degree. According to the Court, however, WVU identified much more reliable evidence, including statements made by VanVoorhies himself under oath, which established that he conceived the invention while he was still a graduate student. In light of these admissions and even when the evidence is viewed most favorably to VanVoorhies, the Court concluded that the self-serving, uncorroborated logbook entries could not create a genuine issue of material fact to preclude SJ in favor of WVU.