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ARTICLE · 09 AUGUST 2021

"Shall Be" Language May Not Effectuate A Present Automatic Assignment Of Rights

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Omni MedSci, Inc., v. Apple Inc., Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), a divided Federal Circuit panel affirmed the district court's denial of Apple's motion to dismiss.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Elizabeth Ferrill
Elizabeth Ferrill
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In Omni MedSci, Inc., v. Apple Inc., Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), a divided Federal Circuit panel affirmed the district court's denial of Apple's motion to dismiss.

While Dr. Islam was an employee at the University of Michigan, he acquired several patents and subsequently assigned the patent rights to Omni.  Omni later sued Apple for infringement, and Apple filed a motion to dismiss for lack of standing. Apple argued that the university owned the asserted patents according to the university bylaws, which stated that patents acquired by university staff and supported by university funds "shall be" the property of the University.  The district court denied Apple's motion, finding that the university bylaws were at most a statement of future intention to assign, and not a present automatic assignment of title.

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