International Nutrition Co. v. Horphag Research
United States Court of Appeals for the Federal Circuit
257 F.3d 1324 (2001)

- Written by Solveig Singleton, JD
Facts
In 1970, Jack Masquelier and others formed the Societe Civile D’Investigations Pharmacologiques D’Aquitane (SCIPA), a French corporation. In 1985, SCIPA executed a contract with Horphag Overseas Ltd. (Horphag) (defendant), an English corporation, to develop medical products. Under the contract, patent applications were to be filed jointly and the proceeds from patent assignment to be shared. The contract included a choice-of-forum clause giving the courts of Bourdeaux, France, exclusive jurisdiction over disputes concerning interpretation or performance. In 1985, an application for a United States patent was filed listing Masquelier as the sole inventor of a method of extracting an antiaging ingredient from plant cells. Masquelier assigned his patent rights to SCIPA and Horphag. In 1994, SCIPA assigned its rights under the patent to International Nutrition Company (INC) (plaintiff). The contract expired in 1995. Horphag sued SCIPA and INC in French court to void the transfer to INC. In 1996, Masquelier assigned any rights in the patent that reverted to him to INC. The French court found that the 1994 assignment to INC violated the contract and French statute law limiting unilateral assignment of patent rights by one joint owner. The court found that INC was not a bona fide purchaser and that Masquelier had no rights in 1996 to assign to INC. The French court held that INC had no rights in the patent. Meanwhile, INC sued in United States district court, asserting that Horphag had infringed the patent. INC argued that the French ruling conflicted with 35 U.S.C. § 262, which allowed a joint patent owner to unilaterally assign rights absent agreement to the contrary. The district court granted summary judgment for Horphag on international-comity grounds, finding that the French court had properly decided the case, and that INC had no standing to sue. On appeal, INC argued that only United States federal courts could rule on ownership of a United States patent.
Rule of Law
Issue
Holding and Reasoning (Mayer, C.J.)
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