Assignment Agreement Incorporating Patent Law Terms Should Have Patent Law Principles in Jury Instructions

Case: Medtronic v. White, Ninth Circuit No. No. 06-16229, (May 15, 2008)

The One Sentence Summary: The Ninth Circuit panel reversed and remanded a jury verdict in a dispute over ownership of a patent where the district court gave agency instructions to the jury in lieu of patent law instructions regarding interpretation of a contract assigning inventions "conceived" or "reduced to practice" during employment.


Ninth Circuit Holdings:

• Objections to agency instructions were adequately preserved.
• The parties to a contract assigning inventions "conceived" or "reduced to practice" during employment incorporated patent law principles by reference to a policy stating that patent law principles would apply.
• Giving agency instructions rather than instructions defining the law of inventorship under patent law principles was clear error.
• An admission against interest by the inventor could be allowed without corroborating evidence although it concerned reduction to practice - corroborating evidence is only required with respect to reduction to practice when the inventor is the proponent of the testimony.