here argument next in number two thousand and one eleven one one nine six gelman against tell your corporation of four fifty one patent and is now deceased the central issue in this appeal is whether there is an underlying consulting agreement between mr levy woods and his company s alarm systems and mr seibert and his company time a corporation and also whether or not that consulting agreement addresses specifically whether invention should be presently assigned by operation of the agreement or whether there was merely an obligation to assign to the inventions of future let's let's assume for present purposes that the consulting agreement did not in of itself well set aside the consulting room let's assume that the arrangement the overall arrangement between m assume that the two inventors at least at the outset each had separate property interests in the patent until and unless that was and signed why is it that section two sixty one  f title thirty five which requires that all assignments of patents be in writing why isn't doesn't that substantially support the argument that there's there can be no assigned in this case because the one thing we know is that we don't have least in the record in executed final complete assignment signed by parties that's correct there is no so it setting aside the statute fraud setting insuperable problem that there's just no written assignment well absent an agreement that puts in writing the obligation to assign or that the present assignment of future inventions i would agree with you and so if you set aside all of the facts related the group the underlying agreement and the agreement itself but we don't really have a written agreement do it i mean what we have is a draft which we don't know ultimately whether the parties execute it or not right and and i would assume that section two sixty one in requiring that an assignment be in writing would require something other than that somebody come up with a draft and say there's the as well believe under texas law it's clear that the consulting agreement if there is a book reverses book which is cited in our memories states that if you have an unsigned agreement and there's partial performance of that agreement then the courts hold that that agreement is in fact in the fact that it's in forcible but it doesn't mean it's it's a written signed instrument another words we have a federal question here under two sixty one and whether this is a and an a sign at this end right right i mean that that that is a first and foremost a federal question now it may be th texas law will say well when the statute of frauds will not be invoked if you have partial performance and therefore if you have an unsigned agreement partial performance it may be the equivalent of a sign of being there at least enforceable but that doesn't make it an assignment in writing that's the problem i'm having at the outset you understand i understand a coachman and i do agree it is a federal question and the issue is i think the result would be if you do not allow for the situation writing well because there would always have to be regretted to sign it so it would preclude to me i believe it would preclude the situation where the agreement contemplates future assignment  was an agreement under texas law but there is substantial evidence of partial performance to establish that the parties did in fact agree to the contract specifically and that's the checks well that would be the checks would be certainly a portion of that your honor but also if you look at the conduct of the parties mr seibert continued on and actually helped develop the invention that's that's apparent from the patent self  expenses and attorney's fees in connection with prosecution of the patent as well as maintenance fees since that time so there's substantial evidence of partial performance here and certainly the court could find that disagreement is in effect secondly with respect to the specific language of paragraph eight that agreement which is but the rest by the district court we believe the district court erred by concluding that this was a an agreement to assign rather then the present assignment a future inventions specifically the language used in paragraph eight states  that the invention shall be shall be and remain the exclusive property of cellular warm this is distinguishable language from the iraq made case in the speech placate the case which were both cited by the district court as well as the apple easier specifically the use of the word remain it's not just shall be it shall be and remain exclusive property so your alarm therefore that indicates as of this time these inventions are it will weigh more raptor isn't that the commonsense clear one thing shall be and main i certainly see that point of view but i i believe that it's it certainly means that it remains probably as of this rather than simply agreeing to a sign in the future there's a statement here that the consultant agrees to execute any and all assignments or other transfer documents which are necessary in the sole opinion of cellular alarm  so it goes on to to address the best and so warm all right pilot interest in such work product so it's not an agreement that i will assign it's if so you alarm determines that for some reason we need additional documentation i cooperate that's the way that should be read so if you interpret both that statement and the prior statement to mean so prior to the execution of any and all assignments or other transfer documents your position is that notwithstanding that language the assignment had already occurred that's correct i mean x normally one would think execution of an assignment is the point which the assignment a curse that is true but again this is saying that in the context of this agreement execution of assignment really just means if later it's determined that we need some the additional paperwork i agree to provide whatever paperwork so you know once that's what the language of the goods over described and the district court opinion that test requires that the partial performance itself must explicitly refer to the contract that is trying to be asserted and also get the only reason for that performance to have occurred is in performance of that contract and none of the pieces of evidence identified by the appellant satisfy either of those probably didn't understand the district court to have decided the case on the ground i thought the district court assumed all of the facts regarding the statute of frauds texas law and so forth in favor of the alman and then said notwithstanding all that that under speedplay reacted this contract isn't good enough to do it and you seem to be going statute of frauds no i prefer the about the aspect of the district court's decision with respect to equitable vs legal title is correct with respect to each of the arguments raised by the appellant first on the higher to invent aspect the theory that just based upon the employment relationship although not employee employer independent contractor and hiring party in this case the argument made by the appellant is that that is sufficient to establish an automatic transfer of title but the district court is correct based upon this court's decision t as well as the argument made by the appellant herself in front of the district court in supplemental briefing that all that they hired to invent their e would allow is equitable title for the hiring party if in fact apply to an independent time similarly the district court is correct that the language of the agreement that you've previously discussed with a  nearly identical to that iraqi case that the patent rights shall be that of the hiring party and that the consultant in that case agreed to assign and in this case agrees to execute any and all assignment indicate a future assignment would take place and in fact it would need need to be no reference to assignments in that language if this was sufficient to do so well it does seem to me it's a fair point that this isn't quite the same as arachnid the word remain does create perhaps some lack of clarity as to the scope of what shall be the sweaty but it be done your adversary he is no that's just a natural want to shoot primarily yes the performance of the parties does in fact indicate that the that  interpretation is correct in that there was an actual written assignment from mr seibert to mr liebowitz not to the company and that is discussed in this draft contract but to mr liebowitz directly with respect to an unrelated patent application and in that instance the assignment was in writing it included the title of the patent application issue and if the parties were of the understanding that no such written agreement was necessary as a result of this  identified as the appellant or ownership of the patent was the assignment that is now admitted to be related to an unrelated ok but but as to whether there was a separate federal requirement that  in right presumably that doesn't mean that somebody brings in a piece of paper that hasn't signed that but doesn't have signatures on it is that in your view valid separate basis for upholding what the district court did without getting into the whole question of whether this document assuming it were treated as being adequate to establish to be enforceable under texas law in light of the partial performance simming that nonetheless that still be a bar to the  is i hesitate because in circumstances of higher to invent which we do not believe is a political to the facts of this case there have been circumstances in which there is no writing and the court has found a transfer title sure if there are no further questions on this just you know i'd like to address the apparent request for additional discovery the request is to be determined under a fifth circuit law and fifth circuit law states that that is the denial of discovery is considered on appeal under an abuse of discretion standard and it was recently addressed by the fifth circuit in a case jasper versus female and in that case the court emphasized the fifth circuit emphasized that assertions of the need for discovery are unavailing and that is what we have here there is no indication that the discover request it is likely to lead to any fruitful result additionally the appellant had the opportunity throughout the lawsuit to pursue that discovery and a lawsuit was pending for three years the appellant own actions in filing the unrelated assignment three months before filing suit but having years after the patent issued indicate that the appellant was aware that there was going to be a question about standing that there were problems with standing so throughout that time period from march of two thousand and seven to the court's decision in december of two thousand and ten they had the opportunity to pursue that discovery and additionally they actually did pursue that discovery from the cyber errors and received confirmation and document production from the cyber tears that they had received what was within their possession relating to any ownership of the four five one patent any signed or unsigned agreements relating the four five one patent so all of those aspects indicate that there is that further discovery is unlikely to be fruitful and the request that has been made in the brief is the request to take a deposition of the heirs to ask where else documents might exist the heirs have indicated that they searched mr seibert business files and that they did not find anything so the the request the scope of the discover requested is limited and unlikely to lead to anything useful i'd also like to discuss a b at least request that the the dismissal be with prejudice the court below erred in the apple east view by ignoring the contractual arrangement that had been reached between the apple lease and the fever heirs and that license prevents the seaver heirs from joining in any lawsuit against the athletes or in taking any steps to upset well but is if the government should prevail in an action which you tell me is ending a nuke in texas courts yes then presumably the cyber heirs would be required to hire and as with the previous federal circuit cases that affirmed the district court's decision of the weight the yes that would be an equitable interest that gelman would have in cyber it's a property right in the patent which would could be converted into legal title through an appropriate action in state court right so correct we're not deciding the question of equitable rights we're deciding the question of legal rights meaning we say doesn't necessarily dictate how the texas case comes out correct correct so why isn't it the right thing to do to say leave leave the parties  that motion no your honor really ye we'll hear about a very brief for both and i'll just take a moment to address the discovery issues although i don't think ultimately in this case that's going to be dispositive or or particularly inform the court's court allowed some limited discovery seibert if they did agree to provide some information importantly though one of the things that was not provided were communications between  and then briefly to just bring us back to where i think this court can address the matter and that is specifically with respect to paragraph eight freeman and and again the fact that this is distinguish  instead of just saying there is i agree to sign rights in the future it actually states that if they are necessary and in the sole opinion of cellular law so i believe those two were out how do we get to the end game for you to where we we need to decide that this was for mr senate if your day right that's correct we need to find that there was no ownership there at all then the documents never had any ownership interest now we've got to get all right yes i suppose you could how do i do that on the facts mean i cannot rely on the back of the trove you know just assume