Regents of the University of California v. LTI Flexible Products, Inc.

Background

The Regents of the University of California and TiMEMS, Inc. alleged that LTI Flexible Products, Inc., doing business as Boyd, infringed several patents. Boyd moved for partial summary judgment on the infringement claim involving U.S. Patent No. 10,458,719, arguing that the plaintiffs did not solely own the relevant intellectual property.

Carl Meinhart and Payam Bozorgi were the named inventors of technology described in a 2015 provisional patent application. In 2012, Meinhart signed an agreement with PiMEMS, Inc., a company he and Bozorgi founded. The agreement stated that intellectual property developed by Meinhart while providing services to PiMEMS would be PiMEMS’s sole property and that Meinhart assigned those rights to PiMEMS. In 2019, Boyd and PiMEMS’s shareholders entered into a stock purchase agreement under which PiMEMS’s shareholders sold their shares to Boyd.

Summary-judgment ruling

Summary judgment is appropriate when there is no genuine dispute about a material fact and the moving party is entitled to judgment under the law. The court applied the rule that a patent co-owner generally must join all other co-owners in an infringement lawsuit.

The plaintiffs challenged the 2012 assignment only on the ground that it lacked consideration, meaning a bargained-for exchange supporting the contract. The court rejected that argument. It found that the agreement, Meinhart’s role as a co-founder and service provider, the surrounding contractual provisions, and the parties’ relationship showed a bargained-for exchange. The court also noted that the written agreement stated that it was made in consideration of mutual promises.

The court further held that the assignment covered the rights at issue. Evidence indicated that Meinhart developed the relevant technology while providing services to PiMEMS. The court found that the plaintiffs’ evidence about the use of some university resources did not create a genuine factual dispute concerning whether Meinhart’s rights were covered by his assignment.

The court determined that the 2012 agreement automatically assigned the covered rights to PiMEMS rather than merely promising a future assignment. As a result, Meinhart had no remaining rights to assign to the University under a later 2013 agreement. The court stated that Boyd acquired PiMEMS and its property, including those rights. Therefore, Boyd was at least a co-owner, and the plaintiffs had not joined all co-owners in the infringement suit.

Disposition

Judge William H. Orrick granted Boyd’s motion for partial summary judgment. The opinion states that the motion concerned one infringement claim; it does not state that all claims in the lawsuit were resolved. The court separately denied Boyd’s motion to seal and ordered Boyd to file public, unredacted copies of the documents it sought to seal within 14 days. A case-management conference was set for June 14, 2022.