## Facts

- Freedom Wireless, Inc. sued Boston Communications Group, Inc. (and others) for infringement of two patents covering prepaid wireless telephone service and billing systems.
- The patents at issue were U.S. Patent Nos. 5,722,067 and 6,157,823, naming Daniel Harned and Douglas Fougnies as co-inventors.
- Freedom Wireless claimed ownership through assignments from its predecessor, Cellular Express, Inc.
- BCGI moved for summary judgment, arguing Freedom Wireless lacked standing because Harned’s prior employment agreement with Orbital Sciences Corporation required assignment of the invention to Orbital.
- Orbital’s business focused on space and satellite technology, not telecommunications billing.
- The employment agreement contained an invention-assignment provision tied to inventions related to Orbital’s business, research, or development, and contemplated execution of further assignment documents.

## Issues

1. Whether Freedom Wireless had Article III and statutory standing to sue for patent infringement by showing legal title to the asserted patents.
2. Whether Harned’s employment agreement with Orbital transferred rights in the inventions/patents to Orbital, either because the inventions fell within the clause’s scope or because the clause operated as a present assignment rather than a future obligation.

## Decision

- The court denied BCGI’s motion for summary judgment.
- The court held Freedom Wireless was the legal owner of the asserted patents and therefore had standing to sue.
- The court concluded Orbital did not obtain title because the inventions were outside the employment clause’s subject-matter scope and the contract language did not effect an automatic present transfer of future invention rights.

## Legal Principles

- A patent infringement plaintiff must establish legal title or a sufficient ownership interest in the asserted patent to satisfy Article III and statutory standing requirements.
- Invention-assignment clauses are construed by their terms; provisions limited to inventions related to an employer’s business, research, or development do not reach inventions outside that scope.
- Contract language that merely obligates an employee to execute future assignments generally creates a promise to assign, not an immediate transfer of legal title; absent further acts, title does not vest in the employer.
- Public policy considerations support a restrained reading of employment assignment provisions where an employer claims inventions unrelated to its business.

## Conclusion

Because the prepaid wireless billing inventions were unrelated to Orbital’s business and the employment agreement did not automatically transfer title without additional assignment acts, Freedom Wireless retained legal ownership of the patents and could proceed as the proper plaintiff.


Freedom Wireless, Inc. v. Bos. Commc’ns Grp., Inc., 220 F. Supp. 2d 16 (D. Mass. 2002)