Walter Beriont v. Gte Laboratories , 535 F. App'x 919 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WALTER J. BERIONT,
Plaintiff-Appellant,
v.
GTE LABORATORIES, INC., GTE SERVICE
CORPORATION, GTE COMMUNICATIONS
CORPORATION, AND ALFRED H. BELLOWS,
Defendants-Appellees.
______________________
2013-1109
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 00-CV-11145, Judge
Richard G. Stearns.
______________________
Decided: August 6, 2013
______________________
WALTER J. BERIONT, of Maynard, Massachusetts,
pro se.
ARTHUR G. TELEGEN, Seyfarth Shaw, LLP, of Boston,
Massachusetts, for defendants-appellees. Of counsel was
WILLIAM L. PRICKETT.
______________________
2 BERIONT v. GTE LABORATORIES
Before RADER, Chief Judge, LOURIE, and O’MALLEY,
Circuit Judges.
Opinion for the court filed by Circuit Judge O’MALLEY.
Opinion concurring in part and dissenting in part filed by
Circuit Judge LOURIE.
O’MALLEY, Circuit Judge.
Walter J. Beriont (“Beriont”) appeals the decision of
the United States District Court for the District of Massa-
chusetts in favor of defendants GTE Laboratories, GTE
Service Corporation, and GTE Communications Corpora-
tion (collectively “GTE”), and Alfred H. Bellows (“Bel-
lows”). Specifically, the district court held that, pursuant
to a settlement agreement between the parties, GTE and
Bellows were free of liability for patent infringement or
any related cause of action raised against them by Be-
riont.
On appeal, Beriont challenges the district court’s rul-
ings regarding the scope of the settlement agreement and
the impact of that agreement on his claims in this action.
We affirm in part, vacate in part, and remand for further
proceedings.
BACKGROUND
Beriont was hired by GTE as an engineer in June of
1983. See Beriont v. GTE Labs, Inc., No. 1:100-CV-11145-
RGS, 2012 WL 2449907, at *1 (D. Mass. June 27, 2012)
[hereinafter “Dist. Ct. Ruling”]. In February of 1996, he
conceived an invention relevant to GTE’s business that
improved low frequency power distribution within a cable
television network. Id. That summer, he disclosed this
invention to GTE and Bellows, a co-worker. Id.Also in the summer of 1996, another co-worker ac-
cused Beriont of stealing laboratory equipment from GTE.
See id. Because of this accusation, Beriont filed a defama-
tion lawsuit in Massachusetts state court against GTE in
September of 1996, which he later amended to include,
BERIONT v. GTE LABORATORIES 3
among others, a wrongful termination claim after he
allegedly was fired for failing to dismiss the suit. See id.;
Beriont v. Reichlen, 60 Mass. App. Ct. 1108, 2003 WL
22992122, at *3 (Mass. App. Ct. Dec. 19, 2003). The
Massachusetts Appeals Court eventually ruled for Beriont
on the wrongful termination claim, finding it undisputed
that GTE fired Beriont for maintaining his defamation
suit. See Beriont v. Reichlen, 2003 WL 22992122, at *3.
Despite the pending state-court litigation, on June 11,
1997, Beriont and Bellows jointly filed a provisional
patent application through GTE’s patent counsel. That
application was followed by a non-provisional application,
U.S. Patent Application No. 09/095,111, filed on June 11,
1998, also through GTE’s patent counsel, which ultimate-
ly issued as U.S. Patent No. 5,920,802 (“the ’802 patent”).
The ’802 patent is assigned on its face to GTE and lists
Beriont and Bellows as co-inventors. See Dist. Ct. Ruling,
2012 WL 1449907, at *1; U.S. Patent No. 5,920,802.
Following issuance of the ’802 patent, Beriont questioned
the assignment and joint-inventorship of the patent, and
rescinded a power of attorney he had granted to GTE in
August of 1998 for the application resulting in the ’802
patent.
The assignment and inventorship dispute led Beriont
to file the instant federal action on June 13, 2000, seek-
ing: (1) a declaratory judgment that he is the sole inventor
of the ’802 patent; (2) the removal of Bellows as a co-
inventor and GTE as assignee; (3) a judgment that GTE
breached a fiduciary duty owed to Beriont; and (4) a
judgment of patent infringement against GTE. See Dist.
Ct. Ruling, 2012 WL 2449907, at *1.
The parties have thus been involved in legal disputes
in both state and federal court for well over a decade. In
addition to the state-court action described above and this
federal action, the parties were involved in a third legal
proceeding—a state court declaratory judgment suit
brought by GTE against Beriont in November of 1998.
This second state-court suit raised claims that relate to
4 BERIONT v. GTE LABORATORIES
those at issue in the present case, namely, ownership of
the then-pending patent application that matured into
the patent-in-suit.
Because of the two pending actions in Massachusetts
state court, this federal case was stayed in September of
2000. On June 13, 2005, the parties reported to the state
court judge that they settled the state-court defamation
suit. Id. The state judge entered a dismissal nisi in the
defamation suit on that day, and did the same in GTE’s
declaratory judgment case two days later. Id. The entry
of those dismissals was delayed upon the parties’ joint
motion, however, pending execution of a formal settle-
ment agreement. When the parties failed to submit a
formal settlement agreement by the extended dismissal
date, the state court judge dismissed both actions on
February 6, 2006 based on the oral settlement agreement
presented to the court in June 2005. Id. The current
dispute concerns the effect of that settlement agreement
on this federal action.
On July 14, 2011, the district court lifted the stay of
this proceeding. Id. at *2. Defendants filed motions to
dismiss and for summary judgment based on the 2005
state-court agreement, which the district court denied
because Beriont disputed the terms of that agreement.
Id. At a pretrial conference on May 8, 2012, however, the
parties did agree on certain terms of that 2005 agree-
ment, specifically that:
(1) GTE/Verizon would acknowledge in writing
that the allegations of theft made against Beriont
were false; (2) GTE would pay Beriont $50,000 to
permanently settle the defamation claim; (3) own-
ership of the ’802 patent would be joint; and (4)
the state court actions would be dismissed and
mutual releases from the state court claims would
be entered.
Id. at *3.
BERIONT v. GTE LABORATORIES 5
On June 27, 2012, without further motions or brief-
ing, the district court determined that these agreed-to
terms obviated the need for trial. The district court
entered a declaration that the ’802 patent is joint and
several property of both Beriont and GTE (and its succes-
sor in interest, Verizon Laboratories) from June 13, 2005
onward. Id. This declaration of joint-ownership, the
district court concluded, “absolves [the parties] of any
liability for uses (or non-uses) made of the patent from
June 13, 2005, until such time as the patent shall expire.”
Id. It further declared that, prior to June 13, 2005, GTE
possessed “at the least” “shop rights” in the ’802 patent,
which absolved it of “any infringement thereof.” Id.
(emphasis added). The court accordingly entered final
judgment.
Beriont appeals these rulings. He contends that the
2005 state-court agreement did not effect a dismissal of
the federal case or provide for full joint ownership of
the ’802 patent under 35 U.S.C. § 262. Instead, Beriont
asserts that the parties contemplated only “equitable”
joint ownership when reaching the state-court agreement.
Beriont also maintains that GTE is liable as an infringer
for activities prior to June 13, 2005 because the joint
ownership agreement was not retroactive and the “shop
rights” doctrine does not protect the acts GTE took in that
time period.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
I. Standard of Review
This court “reviews the district court’s grant or denial
of summary judgment under the law of the regional
circuit.” Bd. of Trs. of Leland Stanford Junior Univ. v.
Roche Molecular Sys., 583 F.3d 832, 839 (Fed. Cir. 2009),
aff’d 131 S. Ct. 2188 (2011) (citations and internal quota-
tion marks omitted). The First Circuit reviews de novo a
district court’s grant or denial of summary judgment. See
6 BERIONT v. GTE LABORATORIES
Johnson v. Univ. of Puerto Rico, 714 F.3d 48, 52 (1st Cir.
2013). “Summary judgment is appropriate when there is
no genuine dispute as to any material fact and the moving
party is entitled to judgment as a matter of law.” Id.II. Federal Claims
A. Patent Infringement Liability
The district court resolved Beriont’s patent infringe-
ment claim by holding that, following June 13, 2005, GTE
was absolved from infringement liability by the agreed-to
terms of the state-court settlement agreement, under
which the parties established GTE’s ownership interest in
the patent. For the time prior to June 13, 2005, the
district court concluded that GTE had “shop rights” in the
patent that absolved it of liability. Beriont does not
dispute that, at a minimum, he agreed on June 13, 2005
to prospective joint ownership of the patent. While Be-
riont disputes the details of the joint-ownership agree-
ment, we find that this dispute does not affect the lower
court’s ruling regarding GTE’s post-2005 infringement
liability. We agree, accordingly, with the district court
that GTE is not liable for patent infringement on or after
June 13, 2005. We believe there is an inadequate record
to support the lower court’s “shop rights” ruling with
respect to the period before June 13, 2005, however.
Accordingly, we vacate and remand for further considera-
tion of Beriont’s infringement claims concerning activities
during that earlier time frame.
1. Post-June 13, 2005 Activities
Beriont claims that the district court erred in absolv-
ing GTE of infringement liability for the period after the
2005 settlement agreement because he did not contem-
plate that full joint ownership (i.e., 50/50) would result
from that agreement. See Brief of Petitioner-Appellant at
1–3, No. 13-1109 (Fed. Cir. June 27, 2012) (“[E]ach party
had a good faith expectation that the joint ownership of
the patent would be equitable.”). Rather, Beriont believes
he is entitled to an interest in the patent, and any reve-
BERIONT v. GTE LABORATORIES 7
nue generated therefrom, that is greater than that of
GTE. See id. at 2.
By default:
[i]n the absence of any agreement to the contrary,
each of the joint owners of a patent may make,
use, offer to sell, or sell the patented invention
within the United States, or import the patented
invention into the United States, without the con-
sent of and without accounting to the other own-
ers.
35 U.S.C. § 262. Beriont concedes that some agreement
on joint ownership exists and does not deny that GTE
became a joint owner and was free to so act as of June 13,
2005. Specifically, he does not assert that there was an
“agreement to the contrary” regarding GTE’s right to
practice the patent under § 262. He asserts only that
there was an agreement to share the benefits of owner-
ship in a disproportionate manner.
If Beriont is correct, he, at most, would have a state
law contract claim for a possible percentage of any profits
received by GTE when practicing the patent. He would
not, however, retain any right to charge GTE with in-
fringement. Accordingly, we agree with the district court
that Beriont’s admission that the settlement agreement
made GTE a joint owner of the patent after June 13, 2005,
fully resolves Beriont’s infringement claims for that time
frame and that judgment on those claims in favor of GTE
was appropriate.
2. Pre-June 13, 2005 Activities
But the district court’s holding regarding GTE’s po-
tential liability prior to the agreement gives us pause.
The “shop rights” doctrine is a judicially created defense
to patent infringement (sometimes described as an im-
plied license). It applies when an employer is sued for
patent infringement by an employee who created the
patented invention with the employer’s resources while
8 BERIONT v. GTE LABORATORIES
under its employment, even though the employer other-
wise has no legal rights to the resultant invention. See 8
Chisum on Patents § 22.03[3]. The doctrine has its limits,
however; for example, it seems an employer can only use
the invention internally in its own business. Id. And the
law regarding the doctrine’s scope is far from clear. Id.
(“Resolution of a number of issues concerning the scope
and content of the shop right is rendered difficult because
of uncertainty as to the doctrinal basis of the right.”). It
is, at least, likely (if not certain) that the doctrine does not
extend to an employer’s sale of the patented invention to
an unrelated third-party for the latter’s unfettered use,
since the “shop right” belongs only to the employer. See
United States v. Dubilier Condenser Corp., 289 U.S. 178,
188–89 (1933) (“Since the servant uses his master’s time,
facilities and materials to attain a concrete result, the
latter is in equity entitled to use that which embodies his
own property and to duplicate it as often as he may find
occasion to employ similar appliances in his business. But
the employer in such a case has no equity to demand a
conveyance of the invention, which is the original concep-
tion of the employee alone, in which the employer had no
part. This remains the property of him who conceived it,
together with the right conferred by the patent, to exclude
all others than the employer from the accruing benefits.”)
(emphasis added).
With no explanation, the district court declared GTE
“not liable for any infringement” of the ’802 patent prior
to June 13, 2005 because it had “at the least” “shop
rights” in the invention during this time period. Dist. Ct.
Ruling, 2012 WL 2449907, at *3. But, in his complaint,
Beriont alleged that “GTE Labs has manufactured, sold,
continues to sell or offers to sell the invention described in
U.S. Patent #05,920,802 for good and valuable considera-
tion.” Complaint at ¶ 16, Beriont v. GTE Labs., Inc., 2012
WL 2449907 (D. Mass. June 13, 2000) (No. 00-CV-11145).
This allegation, which seemingly has gone undisputed,
may implicate activity by GTE that is outside the scope of
BERIONT v. GTE LABORATORIES 9
its shop rights—i.e., use of the patented invention by GTE
outside its own business.
The district court’s reliance on McElmurry v. Arkan-
sas Power & Light Co., 995 F.2d 1576 (Fed. Cir. 1993),
gives us further pause. In McElmurry, Arkansas Power &
Light (“AP&L”) used the invention in question only in its
own facilities, even though a third-party contractor, upon
receipt of the design and specifications for the invention
from AP&L, had manufactured and installed the inven-
tion. See id. at 1583. We concluded it was no act of
infringement for AP&L to hire the unrelated third party
to perform these activities because “AP&L’s ‘shop right’
was not limited to AP&L’s use of [invention] that AP&L
itself had manufactured and installed. Quite to the
contrary, [we held] that AP&L’s ‘shop right’ entitled it to
procure the [invention] from outside contractors.” Id. at
1583–84. But the district court never addressed the
differences between the circumstances in McElmurry (i.e.,
hiring a third party to use the invention in-house) and the
alleged conduct here (i.e., the actual sale without re-
striction to a third party). The latter scenario appears to
be outside the scope of the “shop rights” doctrine.
Notably, the district court received no briefing and
heard no arguments from the parties regarding the “shop
rights” doctrine or its applicability to this case. See Brief
of Respondent-Appellee at 7 n.2, No. 13-1109 (Fed. Cir.
Mar. 25, 2013). The lower court also failed to make
pertinent factual findings regarding the extent of GTE’s
use of the patented invention, or legal conclusions regard-
ing the limits of the “shop rights” doctrine. Lacking the
necessary findings regarding the alleged infringing sales,
we cannot properly review the district court’s judgment,
and a remand for further development of the record is
necessary. See FED. R. CIV. P. 52(a)(1) (“In an action tried
on the facts without a jury . . . , the court must find the
facts specially and state its conclusions of law separate-
ly.”); Nutrition 21 v. United States, 930 F.2d 867, 869
(Fed. Cir. 1991) (“Sufficient factual findings on the mate-
10 BERIONT v. GTE LABORATORIES
rial issues are necessary to allow this court to have a
basis for meaningful review.”).
Accordingly, we vacate the judgment of non-
infringement for the period before June 13, 2005 and
remand for further proceedings in accordance with this
opinion.
We note, however, that there may be alternative
grounds to support the lower court’s non-infringement
finding for the pre-June 13, 2005 period. First, GTE
contends that the joint ownership agreement covered the
entire life of the patent and all uses of the patented
invention. The trial court made no findings on this issue,
relying instead on the “shop rights” doctrine to absolve
GTE of infringement liability for the time frame predating
the settlement agreement. While the scope of the settle-
ment agreement is a question governed by state law, it is
one the district court would be authorized to answer in
the context of deciding the infringement claim, or by
virtue of Beriont’s assertion of a state law contract claim
asking for an interpretation of the settlement agreement. 1
Second, assuming the joint ownership agreement was
prospective only, our review of the record revealed a June
13, 1983 document entitled “Assignment Agreement.” R.
App. at A105, Beriont v. GTE Labs, Inc., No. 13-1109
(Mar. 18, 2013) [hereinafter “Assignment Agreement”]. It
appears that, more than fifteen years before the filing of
the application resulting in the ’802 patent, Beriont
executed the Assignment Agreement whereby he agreed
1 Neither party contends that the state court re-
tained exclusive jurisdiction over the interpretation or
enforcement of the settlement agreement, so we assume
there is no such order which might impact the federal
court’s exercise of supplemental jurisdiction over the state
law claim Beriont has asserted with respect to that
agreement.
BERIONT v. GTE LABORATORIES 11
to “assign and convey to the [GTE Products] Corporation
[his] entire right, title, and interest in and to all . . . ideas,
concepts, inventions, processes, and improvements and all
patent applications and patents thereon.” Id.; see Dist.
Ct. Ruling, 2012 WL 2449907 at *3. The Assignment
Agreement goes on to state that Beriont “understand[s]
the expression ‘Corporation’ as used in this agreement
includes not only GTE Products Corporation but also its
successors or any company controlled by it.” R. App. at
A105.
If the Assignment Agreement is a valid present as-
signment of future rights in all patents relating to inven-
tions made or conceived by Beriont while in GTE’s
employ, then ownership of the ’802 patent pre-June 15,
2005 might well rest exclusively with GTE. Neither party
disputes that the invention claimed in the ’802 patent was
conceived, at least in part, by Beriont, while employed by
GTE or that it is within GTE’s line of business. As such,
at all times during the alleged infringement, Beriont’s
interest in the ’802 patent may have been legally assigned
to GTE. See Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d
1568, 1572 (Fed. Cir. 1991) (“[I]t is settled law that be-
tween the time of an invention and the issuance of a
patent, rights in an invention may be assigned and legal
title to the ensuing patent will pass to the assignee upon
grant of the patent.” (citing Gayler v. Wilder, 51 U.S. (10
How.) 477, 493 (1850))).
Curiously, neither party addressed this document in
its briefing before this court (even though it was a crucial
part of GTE’s declaratory judgment action in state court),
nor did either party do so below. This assignment could
also provide an alternate basis for the district court’s
judgment of non-infringement for the time period prior to
the state-court settlement. It is conceivable that, until
that agreement, Beriont effectively had no ownership
interest in the patent. Thus, if the settlement agreement
is not retroactive, that fact may inure to GTE’s benefit,
not Beriont’s.
12 BERIONT v. GTE LABORATORIES
Finally, on inspection of the U.S. Patent and Trade-
mark Office’s (“USPTO”) Patent Assignment Abstract of
Title database, we found an assignment by Beriont rec-
orded on February 25, 2002, as executed on January 23,
2002. USPTO Assignment Abstract of Title Database
Reel/Frame No. 012641/0723. This document was entered
onto the docket pursuant to a “judgment regarding as-
signment.” Neither party discusses this document before
us, nor did either party do so below.
On remand, we suggest that the district court consid-
er all of these questions and their effect on Beriont’s
infringement claim for GTE’s actions prior to June 13,
2005. 2
2 The dissent disagrees with our decision to remand
the case, not because the lower court’s explanation for its
judgment is defensible, but because it believes an alterna-
tive ground “apparently” exists to justify that judgment—
i.e., the existence of the Assignment Agreement between
GTE and Beriont. Dissenting Op. at 2. Respectfully, it is
not apparent that GTE “had ownership of the patent and
was free to engage in all activities within the scope of the
patent (pre-2005), free from any claims of infringement by
Beriont (or, as far as we know, anyone else).” Id. We
have no idea whether the Assignment Agreement is valid.
Indeed, there is nothing in the record that even indicates
the agreement remained operative as of 2005. The fact
that neither party nor the district court raised or assessed
the Assignment Agreement indicates that it may well not
be case-dispositive. In any event, patent ownership is a
mixed question of law and fact. See Kahn v. Gen. Motors
Corp., 77 F.3d 457, 459 (Fed. Cir. 1996) (“The ownership
of patent property is a matter of law, the decision of which
may entail underlying factual inquiries.”). And no factual
findings regarding the Assignment Agreement were made
below.
BERIONT v. GTE LABORATORIES 13
B. Inventorship and Correction
of Registration Claims
Beriont brings claims to correct the inventorship of
the patent and to correct the patent’s registration. He
contends he is the sole inventor and seeks removal of the
listed co-inventor, Bellows. The district court never
addressed these claims in its June 27, 2012 ruling. It
declared the rights of Beriont and GTE (ruling that the
patent is joint and several property of these parties, GTE
will pay Beriont $50,000, GTE will provide a written
acknowledgement that its defamatory statements were
false, and GTE had “shop rights” in the patent). Based on
these declarations, the district court ordered the case to
be closed. But it is unclear how the declared rights re-
solved the inventorship and correction of registration
claims. Ownership and inventorship are distinct con-
cepts. Accordingly, on remand, the district court should
rule on these claims in the first instance and make the
necessary factual and legal findings.
The Assignment Agreement potentially forms the ba-
sis for a defense for GTE, on which GTE, not Beriont,
caries the burden. If the Assignment Agreement’s impact
on the continuing vitality of Beriont’s claims was as clear
as the dissent is willing to unqualifiedly assume, GTE
likely would have argued as much. Depriving Beriont of
an opportunity to respond to a defense that was never
raised is especially problematic given his pro se status,
since frequently we provide more lenient treatment to pro
se litigants. See McZeal v. Sprint Nextel Corp., 501 F.3d
1354, 1356 (Fed. Cir. 2007) (“Where, as here, a party
appeared pro se before the trial court, the reviewing court
may grant the pro se litigant leeway on procedural mat-
ters, such as pleading requirements.”).
14 BERIONT v. GTE LABORATORIES
II. State Law Claims
Beriont also brought several state-law claims in this
action, specifically for: (1) breach of fiduciary duty, (2)
correction of the registration of the patent to reflect he
never assigned it to GTE, and (3) correction of the joint-
ownership arrangement. See Dist. Ct. Ruling, 2012 WL
2449907, at *1. The first claim is a matter of state law,
and the issues of patent ownership and assignment are,
likewise, state law matters. See Enovys LLC v. Nextel
Commc’ns, Inc., 614 F.3d 1333, 1342 (Fed. Cir. 2010)
(“Who has legal title to a patent is a question of state
law.”); Larson v. Correct Craft, Inc., 569 F.3d 1319, 1327
(Fed. Cir. 2009) (holding that “questions of patent owner-
ship are determined by state law”); Jim Arnold Corp. v.
Hydrotech Sys., Inc., 109 F.3d 1567, 1577 (Fed. Cir. 1997)
(“[A]n action to rescind or cancel an assignment is a state-
law based claim, absent diversity jurisdiction it is to a
state court that plaintiffs must look in seeking a forfeiture
of the license.”) (internal citation omitted).
To the extent these state law claim implicate the
scope and terms of the 2005 settlement agreement, more-
over, that is also a matter of state law. See S & T Mfg.
Co. v. Cnty. of Hillsborough, 815 F.2d 676, 678 (Fed. Cir.
1987) (“Questions regarding settlements are governed by
state law applicable to contracts in general.”).
After declaring the rights described above, the lower
court ordered closure of the case with no explicit resolu-
tion of these claims. We accordingly refuse to take them
up on appeal and remand them back to the lower court
along with the federal claims.
On remand, it is within the district court’s discretion
to exercise supplemental jurisdiction over these state law
claims under 28 U.S.C. § 1367, or to decline supplemental
jurisdiction if it first dismisses all claims over which it
has original jurisdiction. See United Mine Workers of Am.
v. Gibbs, 383 U.S. 715, 726 (1966) (“It has consistently
been recognized that pendent jurisdiction is a doctrine of
BERIONT v. GTE LABORATORIES 15
discretion, not of plaintiff’s right.”). We take no position
on how the trial court should exercise its discretion in
these circumstances.
CONCLUSION
Because the district court failed to make sufficient
factual and legal findings on the issue of “shop rights,” its
ruling regarding GTE’s infringement liability for actions
taken prior to June 13, 2005 is vacated. Because the
district court made no explicit findings with regard to
Beriont’s fiduciary duty, inventorship, or patent correc-
tion claims, its rulings with regard to these claims are
vacated as well. Finding no legal error in the district
court’s determination that GTE is not liable for infringe-
ment for actions it took after June 13, 2005, we affirm
that portion of the judgment. The matter is remanded for
further proceedings in accordance with this opinion.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WALTER J. BERIONT,
Plaintiff-Appellant,
v.
GTE LABORATORIES, INC., GTE SERVICE
CORPORATION, GTE COMMUNICATIONS
CORPORATION, AND ALFRED H. BELLOWS,
Defendants-Appellees.
______________________
2013-1109
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 00-CV-11145, Judge
Richard G. Stearns.
______________________
LOURIE, Circuit Judge, concurring in part and dissenting
in part.
I concur in the majority’s decision to affirm the dis-
trict court’s decision that GTE Laboratories, GTE Service
Corporation, and GTE Communications Corporation
(collectively “GTE”) are not liable for post-2005 infringe-
ment. Respectfully, I dissent from its conclusion that the
case needs to be remanded for further consideration of
Beriont’s claim concerning the effect of possible shop
rights on pre-2005 activity.
2 BERIONT v. GTE LABORATORIES
Beriont was an engineer employed by GTE. U.S. Pa-
tent 5,920,802 (“the ’802 patent”) issued on July 6, 1999,
in the name of Beriont and Bellows as co-inventors and
was assigned “on its face” to GTE. ’802 patent, at [73]. It
is not surprising that an employed engineer assigned his
invention to his employer. Not only was the patent as-
signed on its face to GTE, but the majority opinion notes
that that recitation was both supported by a general
assignment agreement in the record and verified by a
judgment regarding assignment against Beriont, effective
January 23, 2002, and recorded in the Patent Office on
February 25, 2002. See Majority Op. at 10–12 (citing R.A.
105 and USPTO Assignment Abstract of Title Database
Reel/Frame No. 012641/0723). Thus, GTE apparently had
ownership of the patent and was free to engage in all
activities within the scope of the patent (pre-2005), free
from any claims of infringement by Beriont (or, as far as
we know, anyone else).
Beriont and GTE later entered into a dispute concern-
ing the assignment and joint inventorship of the patent.
That dispute was settled in 2005 by, inter alia, an agree-
ment that ownership of the patent would be joint, at least
as between Beriont and GTE. It is well settled that a co-
owner of a patent need not account to other co-owners and
is free to practice the co-owned patent without liability to
any other co-owner. 35 U.S.C. § 262; see Schering Corp. v.
Roussel-UCLAF SA, 104 F.3d 341, 344 (Fed. Cir. 1997).
The fact that GTE now only co-owned the patent, rather
than having full ownership, should not have affected its
right to be free of claims of liability both pre- and post-
2005. If there was a concern over that point on the part of
Beriont, that would have been a matter to be settled in
the agreement, and it was apparently not.
Because GTE is free to practice the patent pre-2005 as
well as post-2005, I see no reason to remand for further
exploration of the shop rights issue. GTE owned the
patent, so it did not need to rely on shop rights.
BERIONT v. GTE LABORATORIES 3
The majority opinion states “[c]uriously, neither party
addressed this document [the general assignment] in its
briefing before this court (even though it was a crucial
part of GTE’s declaratory judgment action in state court),
nor did either party do so below.” Majority Op. at 11. In
any event, in my view, the decision on appeal can be
affirmed without remand. See Fromson v. Advance Offset
Plate, Inc., 755 F.2d 1549, 1556 (Fed. Cir. 1985) (“This
court reviews judgments, not opinions.”); Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983) (“We
sit to review judgments, not opinions.”).
According, I respectfully dissent from the majority’s
decision to remand the case for further consideration of
shop rights.