Inventor Unable to Undo Assignments and Settlements with Co-Inventors

2008-1208 and 1209 Larson v. Correct Craft
MD/FL 6:05-cv-686

Borden Larson worked at defendant Correct Craft (“CCI”) for many years, during which time he designed a new wakeboard tower.  CCI was in that industry, liked the design, commercialized it, and obtained several patents on it.  Along the way it picked up two more inventors, Snook (also from CCI) and an independent contractor Todd. Todd also apparently filed some patents on the side: naturally, disputes ensued, and ultimately settled with everyone being named an inventor on all patents.  Larson assigned his rights to CCI.  Larson now challenges inventorship and assignments. 

Applying Florida law, Judge Greg Presnell granted summary judgment to CCI finding an implied-in-fact contract for employee Larson to assign his rights to employer CCI.  As there was no evidence of fraud or other wrong-doing by CCI, the assignment is valid.  The court later granted summary judgment to Snook and Todd, stating that “Larson’s attack on his presumptive co-inventors is, quite frankly, a mess.”  After noting that Larson’s allegations, if true, would render the patents invalid because Snook or Todd would have been deliberately and deceptively named, the court found sufficient evidence to show that they were, in fact, inventors.  The court also relied on assignor estoppel from Diamond Scientific Co. v. Ambico, Inc., to bar any challenge to the assignments.