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Memorylink Corp. v. Motorola Solutions, Inc.

United States Court of Appeals, Federal Circuit

December 5, 2014

MEMORYLINK CORP., a Wisconsin Corporation, Plaintiff-Appellant,
v.
MOTOROLA SOLUTIONS, INC. AND MOTOROLA MOBILITY, INC., Defendants-Appellees

Page 1267

Appeal from the United States District Court for the Northern District of Illinois in No. 1:08-cv-03301, Judge John J. Tharp, Jr.

MATTHEW J. CAVANAGH, McDonald Hopkins LLC, of Cleveland, Ohio, argued for plaintiff-appellant. With him on the brief were DAVID B. CUPAR; and RICHARD N. KESSLER and PETER T. BERK, of Chicago, Illinois.

CHRISTOPHER LANDAU, Kirkland & Ellis LLP, of Washington, DC, argued for defendants-appellees. Of counsel on the brief were ANNE M. SIDRYS, NYIKA O. STRICKLAND, and JOEL R. MERKIN, of Chicago, Illinois. Of counsel was JOHN C. O'QUINN, of Washington, DC.

Before LOURIE, MOORE, and O'MALLEY, Circuit Judges.

OPINION

Page 1268

Lourie, Circuit Judge.

Memorylink Corp. (" Memorylink" ) appeals from the decisions of the United States District Court for the Northern District of Illinois (i) granting summary judgment in favor of Motorola Solutions, Inc. and Motorola Mobility, Inc. (collectively, " Motorola" ) on the contract and patent infringement claims, Memorylink Corp. v. Motorola, Inc., No. 08 C 3301, 2013 WL 4401676 (N.D.Ill. Aug. 15, 2013) (" Summary Judgment Opinion " ), and (ii) dismissing various tort claims as barred by the statute of limitations, Memorylink Corp. v. Motorola, Inc., No. 08 C 3301, 2009 WL 464338 (N.D.Ill. Feb. 23, 2009) (" Dismissal Opinion " ). Because we conclude that the district court did not err in granting summary judgment or in dismissing the tort claims, we affirm.

Background

In late 1997, Peter Strandwitz (" Strandwitz" ) and Bob Kniskern (" Kniskern" ) approached Motorola, seeking to jointly develop a handheld camera device that could wirelessly transmit and receive video signals. By early 1998, they had constructed prototypes with wireless radio boards and technical information from Motorola, and Strandwitz had formed Memorylink as a funding entity specifically for that venture.

After the first successful demonstration at Motorola's offices in January 1998, Strandwitz sent a letter to Motorola in which he " agree[d] that any patents would be jointly owned by Motorola and Memorylink" and that Motorola should " head up the patent investigation." J.A. 4586. Strandwitz then sent Motorola a technical document that Kniskern drafted, entitled " Wireless Multimedia Core Technology Overview for Patent Review" (" Technology Overview" ). After reviewing that document, Motorola's attorney Hugh Dunlop sent a letter to Strandwitz in April 1998 (the " Dunlop Letter" ). J.A. 250-54. The Dunlop Letter described the features to be focused on for patent applications and stated the attorney's understanding that the inventors were Strandwitz, Kniskern, and two of Motorola's employees: Gary Schulz

Page 1269

(" Schulz" ) and Jan-Michel Wyckoff (" Wyckoff" ). The letter explicitly asked for Strandwitz and Kniskern to " let [the attorney] know if [they] disagree[d] with this determination of inventorship." J.A. 250. A proposed patent filing agreement was enclosed, which " contemplate[d] taking advantage of [Motorola's patent] department for preparation and filing of patent applications," although " Motorola [was] open to alternative proposals" if Strandwitz and Kniskern preferred otherwise. J.A. 251. Attached to the proposed agreement was a copy of the Technology Overview, with what the Dunlop Letter explained were deletions relating to areas in which Motorola was previously involved and thus in which it could not enter into agreements that might result in joint ownership of intellectual property. Shortly thereafter, Strandwitz, Kniskern, Schulz, and Wyckoff all signed an invention disclosure.

In June 1998, all four designated inventors signed the Assignment and Agreement (" Assignment" ), transferring their rights to both Motorola and Memorylink. J.A. 258-65. The Assignment begins with the statement, " [f]or and in consideration of the sum of One Dollar to us in hand paid, and other good and valuable consideration, the receipt of which is hereby acknowledged . . . ." J.A. 258. The designated inventors also signed an inventor declaration for the patent application, which Motorola filed once the Assignment was executed. U.S. Patent 6,522,352 (" ...


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