Glaser Weil IP Team Scores Federal Circuit Win for Optical Technology Client

Glaser Weil is pleased to announce a major patent victory in the Firm’s representation of Core Optical Technologies.

On May 21, 2024, the Federal Circuit Court of Appeals issued a precedential decision overturning a district court’s summary judgment decision that our client did not own the patent it accused technology companies Nokia, CISCO and ADVA of infringing.

The patent ownership issued centered around Core Optical’s founder, Dr. Mark Core, and an invention agreement with his then-employer, TRW. The agreement provided that inventions Dr. Core developed while employed at TRW belonged to TRW, unless Dr. Core developed the invention “entirely on his own time.” While working at TRW, Dr. Core enrolled in a Ph.D. program in Electrical Engineering at U.C. Irvine, and then applied for and was accepted into TRW’s Fellowship Program, which moved Dr. Core to part-time status and paid his school tuition, medical insurance, and provided a small stipend. In exchange, Dr. Core agreed to remain with TRW for one-year after completing his Ph.D. program or to repay the tuition and stipend.

While researching topics for his Ph.D. dissertation, Dr. Core conceived a novel, high capacity, receiver for fiber optic transmission—something he had not worked on for TRW. He later received a patent on his invention—the ‘211 patent. After Core Optical asserted the ‘211 patent against its accused infringers, Nokia, CISCO and ADVA argued that TRW owned the invention, not Core Optical, because TRW paid for Dr. Core’s Ph.D. program. The district court agreed, finding that Dr. Core developed the invention on TRW time, not on his “own time,” as a matter of law, even though TRW did not direct the Ph.D. research or pay Dr. Core to develop the invention. 

On appeal, the Federal Circuit reversed the decision, finding the “own time” language ambiguous and remanding the case to the district court to determine the parties’ mutual understanding of the “own time” phrase in the invention agreement. According to Hadley, the “own time” phrase is commonly used in employee invention agreements but has never been construed by a court. This victory not only secured Core Optical’s ownership of the patent but also paved the way for clarifying the realm of employee invention agreements, setting a precedent for future disputes over intellectual property ownership.

The Glaser Weil team included IP Partner and Department Chair Lawrence Hadley and Partner Stephen Underwood.