University of West Virginia v. VanVoorhies

In 1990, Kurt VanVoorhies (defendant) enrolled in the graduate school at the University of West Virginia (WVU) (plaintiff) to obtain a Ph.D. in engineering. VanVoorhies specifically worked with one professor, James Smith, and Smith discussed WVU’s patent policy with VanVoorhies. The WVU patent policy applied to all university personnel, including faculty, employees, and graduate students. Under the policy, WVU owned the right, title, and interest in any invention made in part by university personnel or with the substantial use of university resources. The policy required inventors to cooperate in patenting any inventions, and inventors were entitled to compensation in the form of licensing royalties. Together, VanVoorhies and Smith developed an invention for a certain antenna (the first invention) in 1991. VanVoorhies completed an invention-disclosure form, applied for a patent (the ’970 application), and assigned the first invention to WVU, including any continuation-in-part (CIP) of the ’970 application. Between August 1993 and February 1994, while finishing his graduate studies, VanVoorhies invented another antenna (the second invention) and advised WVU to seek patent protection for it as a CIP of the ’970 application, which WVU did. VanVoorhies, however, did not cooperate with WVU in completing the continuation application (the ’340 application). In February 1994, VanVoorhies began a position as an assistant professor at WVU. In August 1995, VanVoorhies applied for a patent on the second invention (the ’609 application) and assigned all interest in the ’609 application to his own company. WVU sued VanVoorhies, alleging a breach of his duty to assign the second invention to WVU. VanVoorhies responded with various counterclaims, such as fraud and breach of fiduciary duty. The court granted WVU’s motion for summary judgment that VanVoorhies breached his duty to assign the ’340 and ’609 applications to WVU. VanVoorhies appealed.