A Lesson on Waiver: Voluntarily Dismissing Claim “Waives” Goodbye to Affirmative Defense

Author:Jose M. RecioEditor:Lauren J. Dreyer

In Vapor Point L.L.C. v. Moorhead, Nos. 15-1801, 15-2003 (Fed. Cir. Aug. 10, 2016), the Federal Circuit affirmed a district court’s granting of a motion for correction of inventorship and dismissal of the case.

Vapor Point sued NanoVapor seeking to have two of Vapor Point’s employees added as joint inventors in NanoVapor’s patents. These two employees were previously employed by NanoVapor. NanoVapor countersued, seeking to have its employee added as a joint inventor in Vapor Point’s patents. Each party alleged state law claims against the other, and NanoVapor included an affirmative defense that Vapor Point’s employees, who were former employees of NanoVapor, had an obligation to assign their inventions to NanoVapor. As the case proceeded, the parties filed a notice of dismissal with prejudice of their state law claims. After resolving all inventorship issues in favor of Vapor Point, the district court dismissed the case and found that NanoVapor waived its claim relating to the obligation to assign.

The Federal Circuit affirmed the district court’s inventorship determination and also held that NanoPoint’s voluntary dismissal of its state law claims mooted its affirmative defense that Vapor Point’s two employees had an obligation to assign any rights to NanoVapor. Judge O’Malley concurred with the Court’s decision, but wrote separately to state that the Court should have decided NanoVapor’s assignment claim by holding that NanoVapor could not establish that any assignment of patent rights was executed in writing, as required by 35 U.S.C. § 261.

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