Plaintiff’s Failure to Prove Patent Ownership Ends Trial

Posted on | April 1, 2008 | 8 Comments

2008-1269/1270 Tyco Healthcare v. Ethicon
D/CT 3:04-cv-1702

Plaintiff Tyco and defendant Ethicon each appeal from portions of Judge Janet Artherton’s order granting a directed verdict and dismissing Tyco’s claims without prejudice. Tyco alleged that Ethicon’s Harmonic Scalpel(R) infringed multiple claims of four separate patents generally relate to ultrasonic dissection and coagulation systems.

Tyco claimed ownership of the patents via: the inventors’ assignments to US Surgical Corp. (USSC), USSC’s assignment to Kendell (the "Contribution Agreement"), and Kendell’s name change to Tyco.  However, the Contribution Agreement excluded from assignment certain assets, including "any patents and patent applications relating to any pending litigation involving USSC."

The evidence showed that, at the time of the Contribution Agreement, USSC was involved in several patent disputes with Ethicon.  USSC and Ethicon settled those disputes in a settlement dated the same date as the Contribution Agreement.  That Settlement Agreement included within its scope the patents that are at issue in the present action.

Looking at Paradise Creations v. UV Sales and other standing cases, Judge Artherton concluded that the patents were not part of the Contribution Agreement, and therefore not owned by Tyco.  Accordingly, it lacked standing to bring the suit.

The court dismissed without prejudice, noting Federal Circuit cases suggesting that dismissal without prejudice was appropriate if ownership could be corrected via a new assignment and refiling of the action.  This last issue is the subject to Ethicon’s cross-appeal.

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