Agreement to Assign Insufficient for Standing to Sue
Reviewing Federal Circuit authority, the court concluded that this case is akin to the agreements in FilmTec Corp. v. Hydranautics, 982 F.2d 1546, 1554 (Fed. Cir. 1992) (the employment agreement's use of the phrase "does hereby grant" indicated a present assignment) and in Speedplay Inc. v. Bebop, Inc., 211 F.3d 1245, 1253 (Fed. Cir. 2000) (the employment agreement's use of the phrase "hereby conveys, transfers and assigns" was a present assignment). The district court distinguished the agreement in Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574 (Fed. Cir. 1991), where the employment agreement used the phrase "will be assigned," and this court ruled that this was an agreement to assign, not a present assignment. Thus the district court concluded that the Hewlett-Packard provision whereby the employment agreement obligated Thomas to assign his inventions to Hewlett-Packard served as an immediate assignment of all inventions when they were made.
However, the agreement in this case tracks that of Arachnid, not that of FilmTec. The FilmTec usage "does hereby grant" is not present; nor is the Speedplay usage "hereby . . . assigns." Instead, the Hewlett-Packard agreement says "agree to assign." This difference is reinforced by the Hewlett-Packard 2005 statement that it "never has had any legal or equitable rights" to the '235 patent. The district court should have considered this statement, although it was written after this suit was filed, for it serves to remove any uncertainty arising from the language of the employment agreement. While that agreement is an agreement to assign, such interest in the '235 patentmust be implemented by written assignment. See Helvering v. San Joaquin Fruit & Investment Co., 297 U.S. 496, 499 (1936) (an option in a property right may be an equitable interest in the property but "it would not follow that . . . he acquires property at the date of the option rather than at the date of the conveyance").