Tri-Star Electronics International, Inc. v. Preci-Dip Durtal Sa

United States Court of Appeals
for the Federal Circuit
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TRI-STAR ELECTRONICS INTERNATIONAL, INC.,
Plaintiff-Appellee,
v.
PRECI-DIP DURTAL SA,
Defendant-Appellant,
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2009-1337
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Appeal from the United States District Court for the
Central District of California in Case No. 08-CV-4226,
Judge Gary A. Feess.
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Decided: September 9, 2010
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SPENCER PERSSON , Fulbright & Jaworski L.L.P., of Los
Angeles, California, argued for plaintiff-appellee. On the
brief were GREGORY B. WOOD and TODD M. SORRELL
WILLIAM J. LENZ, Neal, Gerber & Eisenberg LLP, of Chi-
cago, Illinois, argued for defendant-appellant. With him on
the brief were ROBERT E. BROWNE, H ILLARY A. M ANN ,
M AURICE E. FINNEGAN and M ICHAEL R. TURNER.
__________________________

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TRI- STAR ELECTRONICS v. PRECI- DIP 2
Before NEWMAN , BRYSON , AND DYK, Circuit Judges.
N EWMAN , Circuit Judge.
The district court denied the motion to dismiss this pat-
ent infringement suit for lack of standing under Federal
Rule of Civil Procedure 12(b)(1),1 and certified the ruling for
interlocutory appeal. We accepted the certified question,2
and now affirm the district court’s decision.
BACKGROUND
On June 16, 1998, Mr. Leslie Kerek, an inventor em-
ployed by Tri-Star Electronics International, Inc., executed
an assignment of the invention set forth in a specified
patent application entitled “Socket Contact,” in accordance
with his employment contract. The invention was assigned
to “Tri-Star Electronics International, Inc., its successors,
legal representatives and assigns,” and in the assignment
document Tri-Star Electronics International, Inc. was
identified as an Ohio corporation. The patent application
was filed in the United States Patent and Trademark Office
on June 25, 1998, and the assignment was recorded in the
PTO on that date. On September 7, 1999, Mr. Kerek exe-
cuted an assignment for a continuation-in-part application,
U.S. Application No. 09/395,515. The assignment used the
same form as the parent application’s assignment, assigned
the invention to “Tri-Star Electronics International, Inc., its
successors, legal representatives and assigns,” and again
identified Tri-Star Electronics International, Inc. as an Ohio
1 Tri-Star Electronics Int’l, Inc. v. Preci-Dip Durtal
SA, Case No. 08-CV-4226 (C.D. Cal. Feb. 19, 2009) (“District
Court Opinion”).
2 Tri-Star Electronics Int’l, Inc. v. Preci-Dip Duratal
SA, 345 F. App’x 565 (Fed. Cir. 2009).

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TRI- STAR ELECTRONICS v. PRECI- DIP 3
corporation. This application issued as U.S. Patent No.
6,250,974 on June 26, 2001, and is the patent-in-suit.
Tri-Star Electronics International, Inc. was incorporated
under the laws of the State of Ohio on August 5, 1991. On
December 31, 1997, the Secretary of State of Ohio recorded
a certificate of merger between the Ohio corporation and a
newly created California corporation, also named Tri-Star
Electronics International, Inc., and on June 24, 1998, the
Secretary of State of California recorded a Certificate of
Ownership recognizing the merger. On August 11, 2005,
the Tri-Star California corporation merged into a newly
created Delaware corporation.
On June 26, 2008, the Tri-Star Delaware corporation
sued Preci-Dip Durtal SA for infringement of the ’974 pat-
ent. Preci-Dip moved to dismiss, arguing that Mr. Kerek
had assigned his invention to a non-existent entity, the Tri-
Star Ohio corporation, and therefore the chain of ownership
never came into effect. On January 22, 2009, Mr. Kerek (by
his wife’s durable power of attorney) executed a “Confirma-
tory Assignment,” reciting the status of each succeeding Tri-
Star corporate entity and stating that he “confirmed” his
assignment to the appropriate Tri-Star corporations.
The district court interpreted the September 7, 1999 as-
signment as conveying ownership to the Tri-Star California
corporation, as the assignment transferred ownership rights
to Tri-Star of Ohio and its “successors, legal representatives,
and assigns.” District Court Opinion at 5. The district court
held that “at the time of Kerek’s assignment of rights to the
Ohio corporation, the California corporation existed as its
successor and validly acquired Kerek’s patent rights itself.”
Id. The district court observed that under Ohio law the
Ohio corporation continued to exist for the purpose of vest-
ing property rights, including the assignment of the patent

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TRI- STAR ELECTRONICS v. PRECI- DIP 4
application, in the successor California corporation, citing
Ohio Rev. Code §1701.82(A)(1) (2010) which provides that
“whenever a conveyance, assignment, transfer, deed, or
other instrument or act is necessary to vest property or
rights in the surviving or new entity,” the merged corpora-
tion continues to exist for these purposes. Id. Preci-Dip
does not challenge the subsequent transfer by the California
corporation to the Delaware corporation; the question is
whether the California corporation came into the chain of
ownership of the patent application through Mr. Kerek’s
assignment.
D ISCUSSION
In accordance with 35 U.S.C. §281, a party must be a
“patentee” to “have remedy by civil action for patent in-
fringement.” The term “patentee,” as defined in Title 35,
means “not only the patentee to whom the patent was
issued but also the successors in title to the patentee.” 35
U.S.C. §100(d). Preci-Dip argues that the Delaware corpo-
ration lacks standing to sue because Mr. Kerek assigned his
patent application to a non-existent Ohio corporation.
Preci-Dip asserts that no assignment was achieved, and Mr.
Kerek continues to own the patent. Preci-Dip contends that
the “successor, legal representatives and assigns” language
in the assignment document is merely “boiler-plate,” and
cannot be viewed as conveying ownership to an unnamed
“successor.”
An assignment of a patent is interpreted in accordance
with statutory and common law of contract; the district
court relied, without dispute, on Ohio law. Ohio law en-
deavors to “give effect, if possible, to every provision, and if
one construction of a doubtful condition written in a con-
tract would make that condition meaningless, and it is
possible to give it another construction that would give it

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TRI- STAR ELECTRONICS v. PRECI- DIP 5
meaning and purpose, then the latter construction must
obtain.” Farmers’ Nat’l Bank v. Delaware Ins. Co., 94 N.E.
834, 834 (Ohio 1911) (syllabus by the court). The district
court held that Tri-Star of California, as the existing succes-
sor to Tri-Star of Ohio, received the assignment of the
patent at the time of the assignment. This interpretation
maintains the validity of every contract provision, see gener-
ally id. at 838-39, and gives effect to the contract’s purpose
of assigning the invention to Mr. Kerek’s employer, see
Westfield Ins. Co. v. Galatis, 797 N.E.2d 1256, 1261 (Ohio
2003).
The district court looked to the contracting parties’ mu-
tual intent, for “[a]n assignment of an interest in an inven-
tion secured by letters-patent, is a contract, and like all
other contracts is to be construed so as to carry out the
intention of the parties to it,” Nicolson Pavement Co. v.
Jenkins, 81 U.S. 452, 456 (1871); see generally Restatement
(Second) of Contracts §201(1) (1981) (“Where the parties
have attached the same meaning to a promise or agreement
or a term thereof, it is interpreted in accordance with that
meaning.”). It is not disputed that Mr. Kerek intended to
assign his patent rights to his employer, as his employment
agreement required. Preci-Dip has offered no reason to
disregard this contractual intent as evidenced in the en-
tirety of the assignment. Ohio law instructs that the pri-
mary objective of contract interpretation “is to give effect to
the intent of the parties, which we presume rests in the
language that they have chosen to employ.” In re All Kelley
& Ferraro Asbestos Cases, 821 N.E.2d 159, 167 (Ohio 2004).
Federal Circuit law is in accord. It is “a fundamental
precept of common law that the intention of the parties to a
contract controls its interpretation.” Beta Sys. Inc. v. United
States, 838 F.2d 1179, 1185 (Fed. Cir. 1988); Alvin Ltd. v.
United States Postal Serv., 816 F.2d 1562, 1565 (Fed. Cir.
1987) (“In the case of contracts, the avowed purpose and

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TRI- STAR ELECTRONICS v. PRECI- DIP 6
primary function of the court is the ascertainment of the
intention of the parties.”).
The parties to the assignment agree that Tri-Star of
California, as successor to Tri-Star of Ohio, was the in-
tended recipient of ownership rights at the time of execution
of the assignment. The letter of the assignment conforms
with this intent, in conveying ownership to “Tri-Star Elec-
tronics International, Inc., its successors, legal representa-
tives and assigns.” The term “successor” gives effect to this
intent. Section 1701.82(A)(1) provides further confirmation
that the conveyance was valid under Ohio law. Accordingly,
we affirm the district court’s ruling that the assignment
transferred ownership to Tri-Star of California. The ensu-
ing transfer to the Tri-Star Delaware corporation is not
challenged. Answering the certified question, we hold that
the Tri-Star Delaware corporation has standing to bring this
suit.
AFFIRMED

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