Schwendimann v. Arkwright Advanced Coating, Inc. ( 2013 )

Case: 13-143 Document: 15 Page: 1 Filed: 04/26/2013
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JODI A. SCHWENDIMANN (formerly known as Jodi
A. Dalvey),
Plaintiff-Respondent,
v.
ARKWRIGHT ADVANCED COATING, INC.,
Defendant-Petitioner.
______________________
Miscellaneous Docket No. 143
______________________
On Petition for Permission to Appeal pursuant to
28 U.S.C. § 1292(b) from the United States District Court
for the District of Minnesota in No. 11-CV-0820, Judge
Ann D. Montgomery.
______________________
ON PETITION FOR PERMISSION TO APPEAL
______________________
Before RADER, Chief Judge, DYK and WALLACH, Circuit
Judges.
RADER, Chief Judge.
ORDER
Case: 13-143 Document: 15 Page: 2 Filed: 04/26/2013
2 JODI SCHWENDIMANN v. ARKWRIGHT ADVANCED COATING
Arkwright Advanced Coating, Inc. (“Arkwright”) peti-
tions for permission to appeal the district court’s March
19, 2012 and August 10, 2012 orders holding that Jodi A.
Schwendimann had standing to bring her patent in-
fringement claims. Schwendimann opposes.
The document assigning U.S. Patent Application Se-
rial No. 09/541,845 (“the ‘845 application”) to Schwend-
imann is a hand-altered photocopy (“photocopy
assignment”) of an earlier assignment transferring rights
in a different patent application (“the ‘983 application”)
from her former employer, Advanced Coating Technolo-
gies, Inc. (“ACT”) to Schwendimann. The alteration on
the photocopy assignment was made by Schwendimann’s
counsel, who was also ACT’s counsel. Counsel altered the
document by crossing out the “matter” portion of the
“client-matter” number associated with the assignment of
the ‘983 application and replacing it with the “matter”
number associated with the ‘845 application assignment.
The photocopy assignment was faxed to the United States
Patent and Trademark Office with a cover sheet identify-
ing it as an assignment of the ‘845 application from ACT
to Schwendimann.
In its March 19, 2012 order, the district court held
that the photocopy assignment was a valid writing and
that the irregularities therein did not preclude a finding
that the document was a written instrument under
35 U.S.C. § 261. In its August 10, 2012 order, the district
court concluded that the photocopy assignment memorial-
ized a valid agreement between ACT and Schwendimann
to assign rights in the ‘845 patent. The court further held
that while on its face, the photocopy assignment conveyed
rights in the ‘983 application, not the ‘845 application,
Schwendimann had shown she was entitled to refor-
mation under Minnesota contract law.
Arkwright moved for certification for interlocutory
appeal, which the district court granted. The court certi-
Case: 13-143 Document: 15 Page: 3 Filed: 04/26/2013
JODI SCHWENDIMANN v. ARKWRIGHT ADVANCED COATING 3
fied the following question for interlocutory appeal under
28 U.S.C. § 1292(b):
Can a hand-altered photocopy of a prior,
unrelated assignment satisfy the writing
requirement of 35 U.S.C. § 261 for a differ-
ent patent application and be reformed un-
der state law to provide standing when a
third party reading the hand-altered photo-
copy would be unable to discern which pa-
tent rights the parties intended to assign?
Under 28 U.S.C. § 1292(b), a district judge may certify
for appeal an otherwise unappealable order when “of the
opinion that such order involves a controlling question of
law as to which there is substantial ground for difference
of opinion and that an immediate appeal from the order
may materially advance the ultimate termination of the
litigation.” 28 U.S.C. § 1296(b). Whether to accept an
interlocutory appeal is a decision solely within our discre-
tion. See In re Convertible Rowing Exerciser Patent
Litigation, 903 F.2d 822 (Fed. Cir. 1990).
Based on the arguments in the motions papers, we
decline to entertain this interlocutory appeal.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
/s/ Jan Horbaly
Jan Horbaly
Clerk
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