It is usual when you work for someone that anything you do on their time and for their money, belongs to them but these patents are presumably owned by a company and are independent of the individual.
Islam was the inventor, however by using University resources they are the owner according to the bylaws, Islam however assigned the patents to his company regardless.
This part is particularly damning in that respect:
In 2013, Dr. Islam requested that UM’s Office of Technology Trans-fer (“OTT”) confirm Dr. Islam’s ownership of his inventions. OTT denied the request, noting the expenditure of medical school funds to support the cost of Dr. Islam’s space and administrative time required to process Dr. Islam’s ap-pointment to the CVC. J.A. 895. In internal communica-tions, UM also noted that UM provided “medical school faculty partners who have helped springboard ideas with him.” J.A. 885. After a number of communications, various officials at UM—including the Director of Licensing at OTT, the Executive Director of OTT, an Associate Dean at the Engineering School, and the University’s Director of Li-censing—reiterated that they considered UM to be the owner of the patents and noted that Dr. Islam and Omni considered Omni to be the owner of the patents. Dr. Islam was notified of a formal appeals process to challenge UM’s determination of its ownership, but he did not pursue that appeal process.
So, that's been defined now and Apple will have to negotiate a settlement.
The
decision is actually narrower than that.
This is an affirmation of a decision on a motion to dismiss for lack of standing. Apple argues that Islam can't have standing because he doesn't own the patent, and that the reason that he doesn't own the patents is the language in the universities bylaws.
More specifically the sentence "shall be the property of the University".
The court then decided that "shall be the property of the University" doesn't effectuate an automatic assignment of title to the university and that, at most, it is a statement of a future intention to assign the patents.
The underlying reasoning for this interpretation seems a bit surprising and inconsistent to me, but that's beside the point.
The court then affirms the prior decision to deny the motion to dismiss with the logic that Islam has standing, or rather, that the lack of standing isn't properly proven. Throughout the opinion they go out of their way to not answer any of the bigger questions.
This doesn't decide
who owns the patents, merely that there is insufficient grounds for dismissal.
Without getting into the actual validity of the patent, or the question on if and how Apple infringed on the patent, the entire matter on who owns the patent is in and of itself enough ammunition to go to trial instead of settling.
Even if one would want to fully embrace the conclusion in the opinion as an immutable element in the actual trial (and one really shouldn't), all it says is that the ownership didn't automatically transfer to the university and thus, that it needs a specific act to transfer over.
Personally I'd argue that the events in 2013 that are described above, could suffice.
But even if it doesn't, on top of all the arguments available to make this case, the university could simply start a case against Islam/Omni, essentially be Apple's stalking horse, and that alone could halt this trial pending outcome of the case brought by the university.
law.justia.com
