Fed Circ revives patent suits against Nokia, ADVA, and Cisco
US Court of Appeals revives Core Optical's patent infringement cases against tech giants Nokia, ADVA, and Cisco | Decision overturns previous ruling by California District court concerning optical technology | Ambiguities surrounding inventorship agreements add complexity to the legal dispute.
The US Court of Appeals for the Federal Circuit has reopened the door to Core Optical Technologies’ patent infringement lawsuits against Nokia, ADVA, and Cisco.
The appeals court vacated the US District Court for the Central District of California’s decision, which had granted summary judgment in favour of the defendants, remanding the case for further proceedings, yesterday, May 21.
The Californian district court had ruled that the inventor for one of Core Optical’s patent relating to optical signalling was not developed "entirely on his own time", due to their fellowship at US corporation, TRW.
TRW was a developer in fields including electronic components, integrated circuits, computers, software and systems engineering, which was acquired by Northrop Grumman in 2002.
The court found the phrase "entirely on my own time" to be ambiguous because it did not clearly express whether all or part of the inventor’s PhD research time was considered his own or partly TRW's time.
This ambiguity required further examination of the facts, according to the Federal Circuit.
Case background
Core Optical had initially filed complaints between November 2019 and August 2020, accusing the trio of infringing US patent number 6,782,211.
The technology at the centre of the dispute involved innovative techniques to enhance optical signalling, which had been developed by Mark Core during his time at TRW.
In August 2021, Nokia, ADVA, and Cisco argued that Core had already assigned the patent rights to TRW under a 1990 employment agreement, invalidating the later 2011 assignment of the patent back to Core Optical.
The district court sided with the defendants, ruling that Core's work on the patented invention did not meet the criteria for an exception outlined in the TRW Invention Agreement.
Federal Circuit’s reversal and further proceedings
However, the Federal Circuit found that the district court had erred in its interpretation of the employment agreement.
Writing for the majority, Circuit Judge Richard Taranto emphasised that key elements of Core’s fellowship at TRW—such as the time spent and resources used for his PhD research—were disputed and warranted further examination.
The 1990 TRW Invention Agreement had specified that inventions created without TRW's resources and on the employee’s own time, and not related to TRW’s business, would remain the property of the inventor.
The district court had concluded that because Core received a stipend and other benefits from TRW during his PhD program, his research did not happen entirely on his own time.
Core Optical argued, and the Federal Circuit acknowledged, that Core took care to work on his PhD research outside of his official TRW hours and without using TRW resources.
Ambiguity leads to further proceedings
The court determined that these factors introduced sufficient ambiguity regarding the applicability of the non-TRW invention clause, necessitating further judicial review.
Further, the Federal Circuit noted that Northrop Grumman had not asserted ownership of the patent until well after Core Optical had initiated litigation, weakening the argument that TRW, and by extension its successor, had a clear claim to the patent.
Circuit judge Haldane Mayer dissented, maintaining that the benefits provided to Core under the fellowship program constituted TRW resources, thereby affirming the district court’s decision that the invention was not developed entirely on Core’s own time.
With the appellate court’s decision to vacate and remand, Core Optical’s infringement claims against Nokia, ADVA, and Cisco would proceed to further proceedings in the Central District of California.
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