## Facts

- FilmTec owned record title to U.S. Patent No. 4,277,344, covering a reverse osmosis membrane and method, based on an assignment from inventor John E. Cadotte.
- Cadotte previously worked for Midwest Research Institute (MRI) on government-funded reverse osmosis research under contracts addressing ownership of inventions made “in the course of or under” the contracts.
- The relevant contract clause required MRI to “grant to the Government the full and entire domestic right, title and interest” in inventions made under the contract.
- After leaving MRI, Cadotte helped form FilmTec and later assigned his rights in the patent application and any issuing patent to FilmTec; the Government never executed an assignment to FilmTec.
- FilmTec sued Allied-Signal and UOP for infringement based on their TFCL membranes and sought a preliminary injunction.
- Allied argued that the invention was made during Cadotte’s MRI employment and therefore belonged to the United States under the contract, defeating FilmTec’s title and standing.
- The district court found FilmTec had legal title, treated any Government interest as merely equitable, and granted a preliminary injunction barring infringement of claim 7.
- Allied appealed the preliminary injunction to the Federal Circuit.

## Issues

1. Whether FilmTec showed sufficient legal title and standing to seek a preliminary injunction when evidence suggested the United States may own the invention under a government contract.
2. Whether the MRI–Government contract clause operated as a present assignment transferring legal title automatically to the United States upon invention, rather than a mere promise to assign creating only an equitable interest.
3. Whether serious, unresolved doubts about ownership defeated FilmTec’s showing of likelihood of success required for preliminary injunctive relief.

## Decision

- The Federal Circuit vacated the preliminary injunction and remanded.
- The court held the record raised serious, unresolved doubts about who held legal title to the invention and patent, undermining FilmTec’s likelihood of success.
- The court rejected the district court’s view that the Government’s rights were only equitable and irrelevant to the injunction analysis.
- The court directed that title and standing be addressed on a fuller record before injunctive relief could be sustained.

## Legal Principles

- Contract language framed as a present assignment of future inventions can automatically vest legal title in the assignee at the moment the invention comes into existence.
- A promise to assign in the future generally creates only an equitable interest until a later assignment occurs; present-assignment language can transfer legal title without further action.
- Patent ownership and standing are threshold matters; serious doubt about legal title can defeat the patentee’s showing of likelihood of success for a preliminary injunction.
- If a third party holds legal title (including the United States under a present-assignment clause), that legal title can bar infringement relief sought by a claimant relying on a later, ineffective assignment.

## Conclusion

The Federal Circuit vacated the preliminary injunction because unresolved factual and contractual questions about whether the United States automatically obtained legal title under a present-assignment government contract created substantial doubt about FilmTec’s standing and likelihood of success on the merits.


FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991)