James v. J2 Cloud Services, LLC

The patent, which lists Rieley and Muller as inventors and for which they applied for in 1997, describes the conversion of an incoming facsimile or voicemail message into a digital representation, which is then forwarded to an email address. The patent was originally assigned to JFAX, which was owned by Rieley and Muller. It is now assigned to AMT; j2 has an exclusive license. The patent expired in 2017. James alleges that in 1995 Rieley asked James to develop software that would provide “Fax-to-Email, Email-to-Fax, and Voicemail-to-Email” functions. In 1996, James and Rieley signed a contract that does not mention patent rights, but expressly requires the assignment to JFAX of “all copyright interests” in the developed “code and compiled software.” The system was complete in 1996. James assigned all copyrights in code and compiled software to JFAX, but “did not assign any patent ownership or inventorship rights.” He claims that he was not aware of the patent until 2013 when he was contacted by attorneys representing a defendant in an infringement suit. James brought a claim for correction of inventorship under 35 U.S.C. 256, with state-law claims for unjust enrichment, conversion, misappropriation, and unfair competition. Finding James had no Article III standing, the district court dismissed. The Federal Circuit reversed, finding that the agreement could be read as not assigning patent rights and as not establishing a hired-to-invent relationship. View "James v. J2 Cloud Services, LLC" on Justia Law