This morning, the Federal Circuit issued three new opinions: two precedential opinions in patent cases and one nonprecedential opinion in another patent case. Here are the introductions to the opinions.

Whitewater West Industries v. Alleshouse (Precedential)

Richard Alleshouse and Yong Yeh are named as the inventors on U.S. Patent Nos. 9,044,685 and 9,302,189, which claim water-park attractions that individuals may ride as if surfing, and on U.S. Patent No. 9,592,433, which claims nozzle configurations for regulating water flow in such surfing attractions. Pacific Surf Designs Inc., the company Messrs. Alleshouse and Yeh formed and operate to develop and market such attractions, is the assignee of the three patents. Whitewater West Industries, Ltd. (Whitewater) is the successor, for present purposes, of Wave Loch, Inc., which employed Mr. Alleshouse until just before he went into business with Mr. Yeh and the patented inventions were conceived.

Whitewater sued Mr. Alleshouse, Mr. Yeh, and Pacific Surf Design in the United States District Court for the Southern District of California, asserting claims for breach of contract and correction of inventorship. Specifically, Whitewater claimed that Mr. Alleshouse had to assign each of the ’685, ’189, and ’433 patents to Whitewater, as Wave Loch’s successor, under the terms of Mr. Alleshouse’s employment contract with Wave Loch. Whitewater also claimed that Mr. Yeh—who had not been employed by Whitewater or its predecessors and therefore was not under any alleged assignment duty—was improperly listed as an inventor on each of the three patents. The district court held that (a) Mr. Alleshouse breached the employment agreement, the agreement was valid under state law, and Whitewater was therefore entitled to assignment of the defendants’ patent interests, and (b) Mr. Yeh was improperly joined as an inventor. Whitewater West Indus., Inc. v. Alleshouse, No. 17-cv-00501, 2019 WL 4261884 (S.D. Cal. Mar. 27, 2019) (March Decision); Whitewater West Indus., Inc. v. Alleshouse, No. 17-cv-00501, 2019 WL 4261883 (S.D. Cal. Aug. 1, 2019) (August Decision).

We reverse. In particular, we reverse the judgment of breach of contract because we hold that the assignment provision is void under California law. It follows from that holding, as Whitewater does not dispute, that Whitewater lacks standing to contest inventorship. We therefore also reverse the judgment on the inventorship count without separately addressing the merits of inventorship. The defendants are entitled to judgment in their favor in this action.

Vectura Ltd. v. GlaxoSmithKline LLC (Precedential)

Following trial, a jury in the United States District Court for the District of Delaware found that defendants GlaxoSmithKline LLC and Glaxo Group Limited (collectively, “GSK”) infringed U.S. Patent No. 8,303,991 (“the ’991 patent”), owned by plaintiff Vectura Limited, and that the patent was not invalid. The district court denied GSK’s post-trial motions for judgment as a matter of law and a new trial. GSK now appeals from the judgment against it. We affirm.

GREE, Inc. v. Supercell Oy (Nonprecedential)

This appeal relates to eligibility under 35 U.S.C. § 101. GREE, Inc. appeals from a final written decision by the Patent Trial and Appeal Board holding claims 1, 8, and 10–20 of U.S. Patent No. 9,597,594 ineligible. Supercell Oy cross-appeals the Board’s determination that Supercell did not show claims 2–7 and 9 of the ’594 patent to be patent ineligible. We affirm the Board’s determination that claims 1, 8, and 10–20 of the ’594 patent are directed to patent-ineligible subject matter and its determination that claims 5–7 are not directed to patent-ineligible subject matter. We reverse the Board’s determination that claims 2–4 and 9 are not directed to patent-ineligible subject matter.