GREGORY C. JAMES, Plaintiff-Appellant
J2 CLOUD SERVICES, LLC, ADVANCED MESSAGING TECHNOLOGIES, INC., Defendants-Appellees
from the United States District Court for the Central
District of California in No. 2:16-cv-05769-CAS-PJW, Judge
Christina A. Snyder.
Vogt, Oak Park, IL, argued for plaintiff-appellant. Also
represented by Daniel Charles Cotman, Obi Iloputaife, Cotman
IP Law Group, PLC, Pasadena, CA.
Ruttenberg, Ruttenberg IP Law, PC, Los Angeles, CA, argued
for defendants-appellees. Also represented by Bassil George
Reyna, Taranto, and Hughes, Circuit Judges.
TARANTO, CIRCUIT JUDGE.
action against j2 Cloud Services, LLC and Advanced Messaging
Technologies, Inc. (AMT), Gregory James asserts a claim for
correction of inventorship under 35 U.S.C. § 256, as
well as various state-law claims. The district court
dismissed the correction-of-inventorship claim for lack of
jurisdiction and, consequently, dismissed the state-law
claims. We reverse the jurisdictional dismissal and remand
for further proceedings.
James alleges in his complaint that he is the sole inventor
of the subject matter claimed in U.S. Patent 6, 208, 638,
which names Jack Rieley and Jaye Muller as the inventors. The
'638 patent, which Messrs. Rieley and Muller applied for
on April 1, 1997, describes and claims systems and methods
"for accepting an incoming message over a circuit
switched network and transmitting it over a packet switched
network." '638 patent, Abstract. More particularly,
the patent describes the conversion of an incoming facsimile
or voicemail message into a digital representation, which is
then forwarded to an email address associated with the
account holder's phone number. Id., col. 3,
lines 47-61, col. 5, line 66 through col. 6, line 54. The
application that issued as the '638 patent was originally
assigned to JFAX Communications, Inc., the company owned by
Messrs. Rieley and Muller at the time of the invention. At
present, the '638 patent is assigned to AMT, and j2 has
an exclusive license to it. The patent expired on April 1,
James alleges that in November 1995 he was introduced to
JFAX's Mr. Rieley, who asked Mr. James to develop
software that would provide JFAX with three
functionalities-"Fax-to-Email, Email-to-Fax, and
Voicemail-to-Email." J.A. 37. At that time, Mr. James
alleges, he agreed to "create and develop original
software solutions and systems" and began working, and
"[n]obody at JFAX provided input about how" the
work was to be done. Id. According to the complaint,
Mr. James successfully tested a Fax-to-Email system on
December 25, 1995, and the next month he traveled to New York
to install it. J.A. 38.
February 11, 1996, Mr. James and Mr. Rieley, as
representatives, signed a contract between their principals
detailing the work to be done. J.A. 53-57. The agreement was
between JFAX, for which Mr. Rieley signed, and GSP Software,
"a partnership of professional software developers and
independent contractors, " for which Mr. James signed.
J.A. 53, 57. The parties and the district court refer to this
contract as the "Software Development Agreement"
(SDA)-whose preamble states that it reflects the parties'
"Agreement on the terms by which" GSP "will
develop software solutions for the exclusive use of
JFAX." Id. The SDA (which states that it is
governed by Delaware law) does not mention patent rights,
whereas it expressly requires the assignment to JFAX of
"all copyright interests" in the developed
"code and compiled software." J.A. 55.
to the complaint, from February to August 1996, Mr. James,
while in New York, developed and deployed all three JFAX
systems, which included software and hardware components
covered by the '638 patent.J.A. 38-42. "The technical
aspects of the code, functionality and operation of the
system[s] were all conceived and implemented by [Mr.] James,
" he contends, and the only input provided by JFAX
"was that JFAX needed a system." J.A. 37, 40-41.
James alleges that on August 30, 1996, he assigned all
copyrights in code and compiled software to JFAX, but he
"did not assign any patent ownership or inventorship
rights." J.A. 42. He adds that he was not aware of the
'638 patent until "November 2013 when he was
contacted by attorneys representing one of the
defendants" in a suit brought by JFAX (or perhaps a
successor) alleging infringement of the '638 patent. J.A.
August 3, 2016, Mr. James brought the present action. The
operative (first amended) complaint asserts a claim for
correction of inventorship under 35 U.S.C. § 256, along
with state-law claims for unjust enrichment, conversion,
misappropriation, and unfair competition. In October 2016, j2
and AMT filed a motion requesting, among other things, that
the case be dismissed on the ground that the court lacks
jurisdiction because Mr. James has no Article III standing to
bring the action.
December 19, 2016, the district court agreed with the Article
III standing argument and granted the motion under Rule
12(b)(1) of the Federal Rules of Civil Procedure. It
concluded that Mr. James lacks a stake in the controversy
because he "fail[ed] to allege facts sufficient to show
that he has an ownership or financial interest in the
'638 patent." James v. j2 Cloud Servs.
Inc., No. 2:16-cv-05769, 2016 WL 9450470, at *5 (C.D.
Cal. Dec. 19, ...