## Facts

- Kurt L. VanVoorhies entered a university engineering Ph.D. program in 1990 to work on antenna research with Professor James E. Smith.
- The university maintained a written patent policy covering “University personnel,” including graduate students and faculty, claiming university ownership of inventions made at least in part by such personnel or with substantial use of university resources, and requiring inventors to cooperate in patent prosecution; inventors received a stated share of net royalties.
- By June 1991, VanVoorhies completed a first antenna invention, disclosed it to the university in November 1991, and listed Smith as a co-inventor.
- In November 1992, VanVoorhies signed an assignment to the university covering the first invention and a related patent application, expressly including any continuation, division, or continuation-in-part (CIP).
- Between August 1993 and February 1994, while still affiliated with the university, VanVoorhies conceived a second antenna invention and suggested seeking patent protection as a CIP of the earlier application.
- The university filed a CIP application (the ’340 application). VanVoorhies refused to sign CIP paperwork and did not cooperate with prosecution; the university filed using procedures available when an inventor refuses to sign.
- VanVoorhies became an assistant professor in February 1994.
- In August 1995, VanVoorhies filed a separate patent application (the ’609 application) on the second invention and assigned it to his private company instead of the university.
- The university sued for breach of the obligation to assign the ’340 and ’609 applications; VanVoorhies asserted counterclaims and third-party claims for fraud, breach of fiduciary duty, breach of contract, invalid assignment, quasi-contract, and RICO, and sought various procedural relief (disqualification, additional discovery, and lifting a stay).

## Issues

1. Whether VanVoorhies was obligated, under the 1992 assignment and the university patent policy, to assign to the university his interests in the ’340 (CIP) and ’609 patent applications.
2. Whether the district court properly entered summary judgment or dismissed VanVoorhies’s counterclaims and third-party claims (fraud, fiduciary duty, contract, invalid assignment, quasi-contract, and RICO).
3. Whether the district court abused its discretion in denying motions to disqualify counsel, compel additional discovery, and vacate a stay.

## Decision

- The Federal Circuit affirmed the district court in full.
- The court held VanVoorhies had a duty to assign both the ’340 and ’609 applications to the university and breached that duty by refusing to cooperate and by assigning the ’609 application to his company.
- The court affirmed summary judgment against VanVoorhies on fraud, breach of fiduciary duty, breach of contract, and invalid assignment claims, and affirmed dismissal of quasi-contract and RICO claims.
- The court found no abuse of discretion in the district court’s rulings on discovery, disqualification of counsel, and case-management stay.

## Legal Principles

- An assignment that expressly covers continuations, divisions, and continuations-in-part applies to later-filed applications properly characterized within those categories.
- A university patent policy may allocate ownership of inventions to the university when the inventor is within the defined group of covered personnel and the invention was made at least in part through that affiliation or with substantial university resources.
- An inventor’s refusal to sign application documents does not defeat otherwise valid assignment obligations; the assignee may pursue available filing mechanisms when the inventor refuses to cooperate.
- Where express contracts govern patent ownership and compensation, quasi-contract theories seeking alternative recovery are generally barred.
- RICO liability requires well-pleaded predicate acts and a pattern of racketeering activity; disputes over contractual patent ownership, without more, do not satisfy those requirements.
- Trial courts have broad discretion over discovery limits, counsel disqualification, and stays; reversal requires a clear abuse of that discretion.

## Conclusion

The Federal Circuit enforced a researcher’s contractual and policy-based obligations to transfer patent rights to the university, rejected attempts to reframe the ownership dispute as fraud or racketeering, and upheld the district court’s related procedural rulings.


Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002)