Header graphic for print
WinTech Legal Insight for Start-Up and Established Technology Businesses

Patent Issues Arising from Consulting Agreements (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016))

Posted in Consulting Agreements, Intellectual Property Litigation, Patent Counseling & Strategies

In a recent dispute between two medical device companies, a consultant’s alleged contributions to Angioscore patents became a central issue (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016)). The dispute underscores several patent issues that can arise from consulting agreements. A brief summary is provided below:

  • The consultant Dr. Lotan claimed an inventive contribution arose from his work in connection with the development of the AngioSculpt catheters in 2003, which was allegedly reflected in the AngioScore patents.
  • In particular, before the May 1, 2003, effective date, Dr. Lotan performed a single-day study testing AngioSculpt prototypes.
  • Lotan also provided a memorandum highlighting the retraction issue and providing recommendations, as well as conducted two follow-up meetings with AngioScore where he provided design recommendations to address the retraction issue.
  • Several years later in 2014, Dr. Lotan granted TriReme, a competitor of Angioscore, an exclusive license to “any and all legal and equitable rights” he held in the AngioScore patents.
  • In response, AngioScore asserted that it had acquired rights to all inventive work completed by Dr. Lotan under a Consulting Agreement effective May 1, 2003, particularly § 9(a) and § 9(b).

§ 9(a) stated – If, in the course of providing the Services, Consultant incorporates into a Company product, process or machine or into any Invention (as defined below), a Prior Invention owned by Consultant or in which Consultant has an interest, the Company is hereby granted and shall have a non-exclusive license…

§ 9(b) stated – Consultant agrees to promptly disclose to the Company and hereby assigns to the Company, or its designee, all right, title and interest in and to all inventions, original works of authorship, developments, concepts, know-how, improvements or trade secrets …

  • The Court stated – at most, § 9(a) of the Consulting Agreement grants AngioScore a nonexclusive license in the event that the consultant incorporates a prior invention into an AngioScore product during the term of the Consulting Agreement.
  • The Court remand to the district court to consider whether Dr. Lotan’s continued work on and after May 1, 2003 would constitute the type of work listed in § 9(b) of the Consulting Agreement that Dr. Lotan was obligated to assign.