In The Euclid Chemical Co. v. Vector Corrosion Technologies, Inc. (April 1, 2009) CAFC considered whether a particular patent had been assigned to Vector.
There were two patents and a number of patent applications at issue. The two patents are:
- US Patent 6,033,553 (“parent”)
- US Patent 6,217,742 (which is a continuation-in-part of the ‘553 patent or “CIP”)
The ‘742 CIP issued before the assignment. Ownership of the ‘742 patent was the focus of the case.
Here is the actual assignment language:
The District Court found that the ‘742 patent was assigned by the CIP language, even though it was not included in the specifically recited patents.
“Not so fast” said CAFC… besides the lack of a specific reference the Court noted that the language “my US, Canadian, and European applications for patents and issued US patent”.
The fact that only a singular patent, but multiple applications, were described as being assigned was enough for CAFC to find the scope of assignment ambiguous and to remand the case. Let’s hope it doesn’t find this to be one expensive typo… In any case, Euclid provides another great example that every word used in an IP transaction can have a big impact.