University's Inventor Assignment Provision Was Not Automatic, Rules Federal Circuit

The Federal Circuit has affirmed the denial of a patent ownership challenge in litigation filed by inventor-controlled Omni MedSci, Inc. against Apple. At issue was an employment agreement between the inventor behind that NPE and his former employer, the University of Michigan ("UM", or the "university"), stating that he "shall" assign patent rights to the university for inventions developed with its support. On August 2, a panel majority ruled in a precedential decision that this language amounted to a future agreement to assign the patents, meaning that the inventor owned the preceding applications at the time he assigned them to Omni MedSci—as a result, affirming the denial of the defendant's related motion to dismiss for lack of standing. However, Circuit Judge Pauline Newman dissented, arguing that the intent behind the contract dictated the opposite conclusion.