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TriReme received an exclusive license from Dr. Lotan to three patents owned by Angioscore for which Dr. Lotan claims to have been a joint inventor.  Angioscore contends that Dr. Lotan, who was a consultant to Angioscore when the inventions were conceived, assigned all his rights in any inventions to Angioscore in his consulting agreement.  TriReme brought this action to have Dr. Lotan added as a co-inventor on all three patents under 35 U.S.C. § 256.  The district court agreed with Angioscore, holding that Dr. Lotan had in fact assigned his rights to Angioscore in his consulting agreement.

The Federal Circuit reversed.  It held that the provision of the agreement relied on by the district court did not require assignment of the rights, but rather granted Angioscore a non-exclusive license if a prior invention is incorporated into an Angioscope product.  As to Angioscore’s other argument that Dr. Lotan’s further work fell under a different part of the agreement required the resolution of issues of fact that could not be determined at this stage of the proceeding.  The court thus remanded for further consideration by the district court of this issue.  

TriReme Medical, LLC v. Angioscore, Inc., Case No. 2015-1504 (February 5, 2016); Opinion by: Dyk, joined by Prost and Chen; Appealed From: United States District Court for the Northern District of California, Beeler, Mag. J.  Read the full opinion here.

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