/ August 17, 2010

With this ring, I assign you my patent rights

Here’s a patent case that’ll have all inventors closely following their state’s marital property laws and strongly considering the content of their prenuptial agreements.

Mundi Fomukong invents “patents-in-suit” during his marriage to Fonda Whitfield.  After his first patent was issued, Mr. Fomukong and Ms. Witfield divorce. A second patent follows shortly. Mr. Fomukong then forms Enpvsys and assigns his rights to the new company.

Enovsys, after the assignment, sues Sprint-Nextel for patent infringement , while the defendant challenges the case on standing. Standing, you  ask? Sprint wittily argued that any patent infringement actions must be brought jointly by all co-owners of the patent. Specifically, here Sprint argued that Ms. Whitfield retained an interest in the patent rights even after the divorce. This is where the case starts to sound like a steamy soap opera script: Ms. Whitfield assigned her rights to Sprint. Does the phrase, “Hell have no fury like a woman scorned,” come to mind?

When deciding this case, the court first looked to the law of California — the site of the marriage, invention, and divorce. Because California is a “community property” state, “all assets acquired during a marriage are presumptively community property.”  I know what you’re thinking, Fomukong’s about to lose out on lots of money, right? Not so fast…

The court eventually parted from California law because, in their divorce filings, Fomukong and Whitfield checked the box next to the statement, “We have no community assets or liabilities.”

The Federal Circuit, without focus on California’s property law, held that that the final divorce decree – coupled with this box-checking – stripped Whitfield of her community property rights in the patent. “[A]lthough the final divorce decree was silent as to particular property, it nevertheless adjudicated the parties’ rights with respect to that property because it was based on an uncontested complaint which alleged that there was no community property.”

So just how much did Mr. Fomukong almost lose out on, you wonder? The court decided that the patent infringement was worth $2.78 million.

Click here to read/download the full decision.

Comments are closed.