United States Court of Appeals 

for the Federal Circuit ______________________ 

ADVANCED VIDEO TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

HTC CORPORATION, HTC AMERICA, INC., 

BLACKBERRY LTD, BLACKBERRY 

CORPORATION, MOTOROLA MOBILITY LLC,

Defendants-Appellees

______________________ 

2016-2309, 2016-2310, 2016-2311

______________________ 

Appeals from the United States District Court for the 

Southern District of New York in Nos. 1:15-cv-04626-CM, 

1:15-cv-04631-CM, 1:15-cv-04632-CM, Judge Colleen 

McMahon.

______________________ 

Decided: January 11, 2018

______________________ 

ROBERT WILLIAM MORRIS, Eckert Seamans Cherin & 

Mellott, LLC, White Plains, NY, argued for plaintiffappellant. Also represented by OJEIKU CHRISTOPHER 

AISIKU, THOMAS MARTIN SMITH. 

HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued 

for all defendants-appellees. Defendants-appellees HTC 

Corporation, HTC America, Inc. also represented by KYLE 

DAKAI CHEN, MARK R. WEINSTEIN. 
2 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

JEFFRI A. KAMINSKI, Venable LLP, Washington, DC, 

for defendants-appellees Blackberry LTD, Blackberry 

Corporation. Also represented by WILLIAM DEAN COSTON;

CHRISTOPHER T. LA TESTA, Baltimore, MD.

FREDERICK LEE WHITMER, Kilpatrick Townsend & 

Stockton LLP, New York, NY, for defendant-appellee 

Motorola Mobility LLC. Also represented by AKARSH 

BELAGODU, Washington, DC; DAVID CLAY HOLLOWAY, 

Atlanta, GA; STEVEN MOORE, San Francisco, CA.

______________________ 

Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges. 

Opinion of the court filed by Circuit Judge REYNA. 

Concurring opinion filed by Circuit Judge O’MALLEY. 

Dissenting opinion filed by Circuit Judge NEWMAN. 

REYNA, Circuit Judge. 

Advanced Video Technologies LLC appeals an order 

from the United States District Court for the Southern 

District of New York that dismissed its complaints for 

lack of standing. The district court based its decision on 

the ground that a co-owner of the patent was not a party 

to the actions, and the co-owner’s ownership interests in 

the patent were not transferred to Advanced Video. We 

affirm. 

BACKGROUND

This appeal involves U.S. Patent No. 5,781,788 (“’788 

patent”), entitled “Full Duplex Single Clip Video Codec.” 

The technology of the patent is not at issue. The single 

issue involved in this appeal is whether a co-inventor of 

the patent transferred her co-ownership interests in the 

patent under the terms of an employment agreement.
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 3

The ’788 patent lists three co-inventors: Beng-Yu 

“Benny” Woo, Xiaoming Li, and Vivian Hsiun. The invention was created while the co-inventors were employed 

with Infochips Systems Inc. (“Infochips”). Two of the 

inventors, Mr. Woo and Ms. Li assigned their coownership interests in the patent to Advanced Video. The 

only co-ownership interests involved in this appeal are 

those of Ms. Hsiun. 

Advanced Video maintains that it obtained Ms. 

Hsiun’s co-ownership interests in the invention through a 

series of transfers. According to Advanced Video, the first 

transfer was made before the ’788 patent application was 

filed, pursuant to a January 1992 Employment Agreement (“Employment Agreement”) between Ms. Hsiun and 

Infochips. The second transfer occurred when Infochips’

“receivables,” which had been pledged as security in a 

financing agreement between Infochips and an entity 

called Lease Management Services, were seized by Lease 

Management when Infochips went out of business in 

1993. The third transfer occurred in 1995 when Lease 

Management sold the Infochips assets to Mr. Woo, one of 

the three co-inventors. A fourth transfer occurred when

Mr. Woo assigned his ownership interest in the ’788 

patent to an entity called AVC Technology Inc. (“AVC”). 1

In 1995, AVC filed the parent application of the ’788 

patent.2 Two of the three inventors, Mr. Woo and Ms. Li, 

executed assignments of their ownership interest in the 

invention to AVC at that time. Ms. Hsiun, however, 

refused to assign her interests. AVC filed a petition 

before the U.S. Patent and Trademark Office (“PTO”)

 

1 We only address the validity of the purported 

transfer under the Employment Agreement. 2 A continuation of that patent application, filed in 

1997, ultimately issued as the ’788 patent in 1998.
4 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

requesting that it be permitted to prosecute the application without an assignment from Ms. Hsiun. In support, 

AVC filed a declaration attaching the Infochips Employment Agreement and financial documents between Infochips and Lease Management purporting to show that 

Mr. Woo and AVC had acquired Ms. Hsiun’s ownership 

rights. The PTO granted AVC’s petition and the ’788 

patent was issued to AVC. AVC was later dissolved, but 

not before purporting to transfer its assets to its successors, and ultimately, Advanced Video. 

In 2011, Advanced Video filed three patent infringement lawsuits against Appellees in the United States 

District Court for the Southern District of New York. The 

district court found, however, that AVC had failed to 

comply with Delaware statutory law governing the distribution of assets for dissolved corporations, and that no 

patent rights had transferred from AVC to Advanced 

Video. Because Advanced Video had no ownership interest in the patent, the cases were dismissed for lack of 

standing. Advanced Video Techs., LLC v. HTC Corp., 103 

F. Supp. 3d 409 (S.D.N.Y. 2015).3 

In 2015, the Delaware Court of Chancery appointed a 

Receiver to transfer to Advanced Video any patent rights

held by AVC. Advanced Video Techs. LLC v. HTC Corp., 

No. 15 Civ. 4626 (CM), 2016 WL 3434819, at *5-6 

(S.D.N.Y. June 14, 2016). After the transfer was 

achieved, Advanced Video filed three new patent infringement lawsuits against Appellees. In response to a 

motion to dismiss, Advanced Video argued before the 

 

3 The district court also awarded attorneys’ fees, 

finding the case “exceptional” under 35 U.S.C. § 285. The 

fee award was affirmed by this court. Advanced Video 

Techs., LLC v. HTC Corp., 677 F. App’x 684 (Fed. Cir. 

2017). 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 5

district court that it had acquired Ms. Hsiun’s ownership 

rights via the aforementioned series of transfers beginning with a transfer from Ms. Hsiun to Infochips under 

the terms of the Employment Agreement. According to 

Advanced Video, the transfer was effected pursuant to

three provisions of the Employment Agreement: a “will 

assign” provision, a trust provision, and a quitclaim 

provision. The “will assign” and trust provisions provide 

as follows: 

I agree that I will promptly make full written disclosure to the Company, will hold in trust for 

the sole right and benefit of the Company, and 

will assign to the Company all my right, title, 

and interest in and to any and all inventions, original works of authorship, developments, improvements or trade secrets which I may solely or 

jointly conceive or develop or reduce to practice, or 

cause to be conceived or developed or reduced to 

practice, during the period of time I am in the employ of the Company.

J.A. 258 (emphasis added).

The quitclaim provision provides as follows:

I hereby waive and quitclaim to the Company 

any and all claims, of any nature whatsoever, 

which I now or may hereafter have infringement

[sic] of any patents, copyrights, or mask work 

rights resulting from any such application assigned hereunder to the Company. 

J.A. 260. (emphasis added). 

The district court concluded that these provisions did 

not effect a transfer of Ms. Hsiun’s ownership rights to 

Advanced Video. As such, because Ms. Hsiun was not a 

party to the suit, the district court dismissed the case for 

lack of standing. Advanced Video appeals. 
6 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

DISCUSSION

1. Standard of Review

This court reviews de novo a district court’s dismissal 

for lack of standing. Isr. Bio-Eng’g Project v. Amgen Inc., 

475 F.3d 1256, 1262–63 (Fed. Cir. 2007); Prima Tek II, 

L.L.C. v. A-Roo Co., 222 F.3d 1372, 1376 (Fed. Cir. 2000). 

Factual findings relevant to a lack of standing determination are reviewed for clear error. Enovsys LLC v. Nextel 

Commc’ns, Inc., 614 F.3d 1333, 1340–41 (Fed. Cir. 2010). 

2. “Will Assign” 

Advanced Video argues that Ms. Hsiun’s ownership 

rights transferred immediately upon execution of the 

Employment Agreement. In support, Advanced Video 

points to “will assign” language contained in the agreement.

Section 2.b of the Infochips Employment Agreement 

provides that Ms. Hsiun “will assign to the Company” all 

her right, title, and interest in any inventions. The district court found that “will” invoked a promise to do 

something in the future and did not effect a present 

assignment. Advanced Video Techs., 2016 WL 3434819, 

at *8–9. The court relied on Arachnid, Inc. v. Merit 

Industries, Inc., 939 F.2d 1574, 1576 (Fed. Cir. 1991), 

which held that “will be assigned” language in a consulting agreement did not itself effect an assignment but was 

merely a promise to assign. Id. at 1576, 1580–81. The 

district court also reasoned that the trust provision of the 

Employee Agreement undermined an immediate assignment because Ms. Hsiun could not immediately assign the 

rights and at the same time hold them in trust. Advanced 

Video Techs., 2016 WL 3434819 at *9. We agree with the 

district court that no present assignment exists in the 

Employment Agreement. The “will assign” language 

alone does not create an immediate assignment of Ms. 

Hsiun’s rights in the invention to Infochips. 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 7

3. Trust Assignment

Advanced Video argues that “will hold in trust” created an immediate trust under California law in favor of 

Infochips. Even were we to determine that Ms. Hsiun’s 

interests in the invention were immediately placed in 

trust, it does not follow that those interests were automatically, or ever, actually transferred out of trust in favor of 

Infochips. Absent a transfer, Ms. Hsiun would continue 

to hold the invention rights as a trustee. While Advanced 

Video could potentially seek to enforce its alleged ownership rights, or allege a breach of Ms. Hsiun’s duties as a 

trustee by her failure to transfer those rights, by bringing 

an action against Ms. Hsiun, no party brought such an 

action. See, e.g., Jim Arnold Corp. v. Hydrotech Sys., 109 

F.3d 1567, 1578 (Fed. Cir. 1997) (stating that a party 

needs to file a state-law based claim to obtain title to the 

patent before bringing a patent infringement claim). 

Since Advanced Video has not sought to enforce any 

obligation Ms. Hsiun might have under the trust, it

ultimately has no standing to bring a patent infringement 

action. See Abraxis Bioscience, Inc. v. Navinta LLC, 625

F.3d 1359, 1366 (Fed. Cir. 2010).

Under California trust law a trust beneficiary “generally is not the real party in interest,” “may not sue in the 

name of the trust,” and “has no legal title or ownership 

interest in the trust assets.” Saks v. Damon Raike & Co., 

8 Cal. Rptr. 2d 869, 874–75 (Cal. Ct. App. 1992) (citing 

Botsford v. Haskins & Sells, 146 Cal. Rptr. 752, 754 (Cal. 

App. 1978)). The dissent cites Kadota Fig Association of 

Producers v. Case-Swayne Co., 167 P.2d 518 (1946), for 

the proposition that the real party in interest in California trust disputes is actually the beneficiary, not the 

trustee. Dissent at 6. Kadota does not apply, however, 

because it involves a “business trust,” which, under California law, is considered “a type of business organization”

and not the type of trust in this case. Goldwater v. Oltman, 292 P. 624, 627 (Cal. 1930). Even if Advanced Video
8 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

is correct that Ms. Hsiun’s rights are held in trust, Advanced Video, as a trust beneficiary, cannot maintain a 

patent infringement suit where Ms. Hsiun is not a party, 

nor can she as a co-owner of the patent be involuntarily 

joined as a plaintiff, except under limited circumstances

which do not apply here.4 

4. Quitclaim Assignment

Advanced Video maintains that it has standing because it eventually acquired Ms. Hsiun’s ownership 

interest in the invention when she quitclaimed her interest to Infochips under the terms of the Employment 

Agreement. 

Section 2.e of the Employment Agreement provides: 

I hereby waive and quitclaim to the Company any 

and all claims, of any nature whatsoever, which I 

now or may hereafter have infringement [sic] of 

any patents, copyrights, or mask work rights re-

 

4 See Fed. R. Civ. P. 19; STC.UNM v. Intel Corp., 

754 F.3d 940, 945–46 (Fed. Cir. 2014) (explaining that the 

right of a co-owner “to impede an infringement suit 

brought by another co-owner is a substantive right that 

trumps the procedural rule for involuntary joinder”). 

Under California trust law, a trust beneficiary may seek 

judicial compulsion against a trustee who refuses to 

enforce a valid cause of action, and “[i]n order to prevent 

loss of or prejudice to a claim, the beneficiary may bring 

an action in equity joining the third person and the trustee.” Saks, 8 Cal. Rptr. 2d at 875 (citing Triplett v. Williams, 74 Cal. Rptr. 594, 596 (Cal. Ct. App. 1969)). Here, 

Advanced Video has not attempted to join Ms. Hsiun as a 

trustee or otherwise bring an action against Ms. Hsiun. 

Accordingly, we do not address the question of whether 

Ms. Hsiun could be involuntarily joined as trustee under 

California trust law and Fed. R. Civ. P. 19(a)(1)(B)(i). 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 9

sulting from any such application assigned hereunder to the Company.

J.A. 260. 

Advanced Video argues that “assigned hereunder” 

should essentially be read to mean all claims “assignable 

hereunder,” and that rights that Ms. Hsiun promised she 

“will assign” were immediately quitclaimed under the 

Employment Agreement. The Employment Agreement, 

however, does not provide “assignable hereunder” language. Advanced Video cites no authority showing that 

“assigned hereunder” covers patent rights that could have 

been assigned under a contract, but were never actually 

assigned. 

The quitclaim provision waives Ms. Hsiun’s rights to 

interests in any patent rights that she assigned under the 

agreement. But, as no patent rights were ever assigned 

to Infochips, the quitclaim provision has no application. 

Accordingly, we find that the quitclaim provision in the 

Employment Agreement did not effect an assignment of 

the ’788 patent from Ms. Hsiun to Infochips, AVC, or 

Advanced Video. 

The dissent argues that it may be discerned from the 

Employment Agreement that the parties intended any

ownership interest in inventions developed during Ms. 

Hsiun’s employment with Infochips were the property of 

Infochips. Dissent at 7–10. But, the terms of the Employment Agreement provide otherwise. Generally, courts 

should not deviate from unambiguous provisions unless 

they lead to “absurd results.” Shaw v. Regents of Univ. of 

Cal., 67 Cal. Rptr. 2d 850, 855 (Cal. Ct. App. 1997); see 

also Coast Plaza Doctors Hosp. v. Blue Cross of Cal., 99 

Cal. Rptr. 2d 809, 815 (Cal. Ct. App. 2000). In this instance, the Employment Agreement is unambiguous and, 

as stated, there is no reason to believe that the parties 

intended a present assignment. This court has previously 

found such agreements to assign insufficient to confer 
10 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

standing. See IpVenture, Inc. v. Prostar Comput., Inc., 

503 F.3d 1324, 1327 (Fed. Cir. 2007). 

CONCLUSION

Advanced Video does not have full ownership of the 

’788 patent. Ms. Hsiun is neither a party to the suits, nor 

has she consented to these suits. Advanced Video, therefore, has no standing to maintain its suit. Accordingly, we 

affirm the district court’s dismissal of the cases. 

AFFIRMED

COSTS

No costs.
United States Court of Appeals 

for the Federal Circuit ______________________ 

ADVANCED VIDEO TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

HTC CORPORATION, HTC AMERICA, INC., 

BLACKBERRY LTD, BLACKBERRY 

CORPORATION, MOTOROLA MOBILITY LLC,

Defendants-Appellees

______________________ 

2016-2309, 2016-2310, 2016-2311

______________________ 

Appeals from the United States District Court for the 

Southern District of New York in Nos. 1:15-cv-04626-CM, 

1:15-cv-04631-CM, 1:15-cv-04632-CM, Judge Colleen 

McMahon.

______________________ 

O’MALLEY, Circuit Judge, concurring. 

I agree that we are bound to apply the law of this Circuit that compels the result we reach today. I, thus, must 

concur in that result. I write separately, however, to 

explain why I continue to believe that the binding precedent which serves as the predicate for today’s majority 

opinion is wrong. In particular, I address why the conclusion that a non-consenting co-owner or co-inventor can 

never be involuntarily joined in an infringement action 

pursuant to Rule 19 of the Federal Rules of Civil Procedure is incorrect. In the absence of that errant conclu-
2 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

sion, the various questions we address in this case would 

be irrelevant.

As I explained in my opinion dissenting from the denial of the petition for rehearing en banc in STC.UNM v. 

Intel Corp., 767 F.3d 1351 (Fed. Cir. 2014), several things 

are clear about Rule 19. First, Rule 19(a)(1)(A) provides 

that “[a] person who is subject to service of process and 

whose joinder will not deprive the court of subject-matter 

jurisdiction must be joined as a party if[] in that person’s 

absence, the court cannot accord complete relief among 

existing parties.” Fed. R. Civ. P. 19(a)(1)(A) (emphasis 

added). Second, Rule 19, like all other Federal Rules of 

Civil Procedure, is “as binding as any federal statute.” 

Stone Container Corp. v. United States, 229 F.3d 1345, 

1354 (Fed. Cir. 2000) (“[T]he Federal Rules of Civil Procedure, like the Federal Rules of Criminal procedure, are ‘as 

binding as any federal statute.’” (quoting Bank of Nova 

Scotia v. United States, 487 U.S. 250, 255 (1988)). Third, 

again, like all other Rules of Civil Procedure, Rule 19 

applies in patent cases just as fully as it applies in all 

other federal civil actions. See, e.g., eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393–94 (2006) (rejecting 

this court’s attempt to develop a rule regarding the right 

to injunctive relief “unique to patent disputes,” holding 

that “the traditional four-factor framework . . . governs 

the award of injunctive relief”). And, finally, it is Rule 

19—not substantive judge-made laws governing joinder—

that establishes the criteria for assessing joinder. See 

Provident Tradesmens Bank & Tr. Co. v. Patterson, 390 

U.S. 102, 118 n.13 (1968) (citing with approval to a commentator who noted that “there is no case support for the 

proposition that the judge-made doctrines of compulsory 

joinder have created substantive rights beyond the reach 

of the rulemaking power” (quoting 2 Barron & Holtzoff, 

Federal Practice & Procedure § 512, n.21.14 (1967 Supp.) 

(Wright ed.))). 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 3

And, as Judge Newman wrote in her opinion dissenting from the denial of rehearing en banc in STC.UNM, 

“Rule 19 is not permissive” despite this court’s precedent 

that “Rule 19 uniquely does not apply in patent cases.” 

767 F.3d at 1355 (Newman, J., dissenting). This precedent represents a “further removal” of patent cases from 

“the mainstream of the law.” Id. Indeed, the “unique 

exclusion of patent cases from Federal Rule 19 is as 

peculiar as it is unjustified,” for “[n]o justification can be 

found for withdrawing or excluding the co-owner of a 

patent from access to legal process.” Id. at 1356–57.

Despite our precedent, Rule 19(a) provides for the involuntary joinder of a necessary party. The rule states, in 

relevant part, that:

(a) Persons Required to be Joined if Feasible.

(1) Required Party. A person who is subject to service of process and whose joinder 

will not deprive the court of subjectmatter jurisdiction must be joined as a 

party if:

(A) in that person’s absence, the 

court cannot accord complete relief 

among existing parties; or 

(B) that person claims an interest 

relating to the subject of the action 

and is so situated that disposing of 

the action in the person’s absence 

may:

(i) as a practical matter 

impair or impede the person’s ability to protect the 

interest; or

(ii) leave an existing party 

subject to a substantial 
4 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

risk of incurring double, 

multiple, or otherwise inconsistent obligations because of the interest.

(2) Joinder by Court Order. If a person 

has not been joined as required, the court 

must order that the person be made a party. A person who refuses to join as a 

plaintiff may be made either a defendant 

or, in a proper case, an involuntary plaintiff.

Fed. R. Civ. P. 19(a)(1)–(2). By its terms, therefore, when 

a person satisfies the requirements of Rule 19(a), joinder 

of that person is required.

If joinder of a required party is not feasible, Rule 19(b) 

provides that “the court must determine whether, in 

equity and good conscience, the action should proceed 

among the existing parties or should be dismissed.” Fed. 

R. Civ. P. 19(b). That analysis involves consideration of 

several factors specified in Rule 19(b), including: (1) “the 

extent to which a judgment rendered in the person’s 

absence might prejudice that person or the existing parties”; (2) “the extent to which any prejudice could be 

lessened or avoided”; (3) “whether a judgment rendered in 

the person’s absence would be adequate”; and 

(4) “whether the plaintiff would have an adequate remedy 

if the action were dismissed for nonjoinder.” Fed. R. Civ. 

P. 19(b)(1)–(4).

Recognizing the mandatory nature of Rule 19, one 

panel of this court has noted, albeit in dictum, that “all 

entities with an independent right to enforce the patent 

are indispensable or necessary parties to an infringement 

suit. When such an entity declines to join in the suit it 

may be joined involuntarily, either as a party plaintiff or 

party defendant[] . . . .” IpVenture, Inc. v. ProStar Comput., Inc., 503 F.3d 1324, 1325–26 (Fed. Cir. 2007) (“[W]e 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 5

need not reach the question of whether the district court 

had discretion, in applying Fed. R. Civ. P. 19(a), to permit 

the addition of parties in this case without requiring 

dismissal and refiling by the plaintiff.”).

For its part, the Supreme Court has indicated in a 

non-patent case that Rule 19—not substantive law—

applies when determining who must participate in a 

lawsuit. See Provident Tradesmens, 390 U.S. 102. There, 

the Third Circuit declined to follow Rule 19, and, instead, 

held that

the right of a person who ‘may be affected’ by the 

judgment to be joined is a ‘substantive’ right, unaffected by the federal rules; that a trial court 

‘may not proceed’ in the absence of such a person; 

and that since [one party] could not be joined as a 

defendant without destroying diversity jurisdiction the action had to be dismissed.

Id. at 107.1 The Supreme Court reversed, holding that 

“Rule 19(b), which the Court of Appeals dismissed as an 

ineffective attempt to change the substantive rights . . . is, 

on the contrary, a valid statement of the criteria for 

 

1 At the outset, the Court noted that the absent 

party fell within the category of persons who should be 

“joined if feasible” under Rule 19(a), but “could not be 

made a defendant without destroying diversity.” Provident Tradesmens, 390 U.S. at 108. Because Rule 19(a) 

provides that joinder cannot deprive the court of subjectmatter jurisdiction, the Court focused its analysis on Rule 

19(b), which asks whether the court should dismiss the 

action or proceed without the absent party. Id. at 108–09. 

The Court’s discussion of the interplay between alleged 

substantive rights and Rule 19 remains relevant to consideration of this issue, even though it occurred when 

discussing Rule 19(b) rather than Rule 19(a). 
6 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

determining whether to proceed or dismiss in the forced 

absence of an interested person.” Id. at 125.

There is no dispute over whether co-owners are necessary parties to infringement actions; the question we 

must address is whether a co-owner’s mere recalcitrance 

can prevent enforcement of another co-owner’s rights. 

Rule 19(a) is designed to address circumstances just like 

those at issue here. See 7 Charles Alan Wright et al., 

Federal Practice and Procedure § 1606 (3d ed. 2013) (“The 

joinder of an absent person who should be a plaintiff as an 

involuntary plaintiff is authorized by the second half of 

the third sentence of Rule 19(a). . . . The purpose of this 

procedure is to mitigate some of the harshness that 

occasionally results when the joinder of a nonparty is 

found to be desirable but the nonparty refuses to join in 

the action.”). Involuntary joinder assumes recalcitrance 

by the joined party (or, as here, a preference not to participate), but authorizes joinder nonetheless. Rule 19(a) 

makes no exception for recalcitrant patent owners and we, 

to date, have not explained from where such an exception 

derives. See id. (noting that the “most typical application” 

of Rule 19(a) “has been to allow exclusive licensees of 

patents and copyrights to make the owner of the monopoly an involuntary plaintiff in infringement suits”).

The original cases on which our Rule 19 joinder precedent relies do not proscribe the use of involuntary joinder 

of co-owners or co-inventors in patent cases, as our precedent does. Neither Ethicon, Inc. v. U.S. Surgical Corp., 

135 F.3d 1456 (Fed. Cir. 1998), nor any other case on 

which it relies specifically holds that a patent co-owner or 

co-inventor cannot be involuntarily joined under Rule 

19(a). Examination of the pertinent case law reveals that 

repeated references to unsupported dicta have morphed 

into a hard-and-fast rule from which this court refuses to 

deviate. 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 7

In Ethicon, we quoted an earlier Federal Circuit decision for the proposition that “one co-owner has the right to 

impede the other co-owner’s ability to sue infringers by 

refusing to voluntarily join in such a suit.” 135 F.3d at 

1468 (quoting Schering Corp. v. Roussel-UCLAF SA, 104 

F.3d 341, 345 (Fed. Cir. 1997)). Schering, in turn, relied 

solely on a Sixth Circuit decision—Willingham v. Lawton, 

555 F.2d 1340 (6th Cir. 1977)—not on the Patent Act or 

even preexisting federal common law. But Willingham

did not purport to create any substantive patent rights. 

In fact, the Willingham court expressly declined to address the patent co-owner’s argument that it had a substantive right not to be forced to join the action under 

Rule 19(a). As explained below, Rule 19 was not at issue 

in either Schering or Ethicon, and the court in Willingham actually endorsed the application of Rule 19(a) on 

the facts before it. Accordingly, none of these cases supports our current rule that displaces application of Rule 

19.

First, the “crux of the problem” in Willingham was 

“whether a co-owner could authorize by contract another 

co-owner to file suit for patent infringement without the 

permission of the first co-owner, in an action in which the 

unwilling co-owner is joined as an involuntary plaintiff 

under Rule 19.” 555 F.2d at 1343–44. Although the 

patent co-owner, Star, argued that “Rule 19(a) is procedural and does not alter the substantive law requiring 

voluntary joinder of all co-owners of a patent in a suit for 

its infringement,” the court found that it “need not reach 

this issue,” because Star waived any objection by signing 

a contract that gave either co-owner the right to initiate 

an infringement action in its sole discretion. Id. at 1343 

& n.5. The court further explained that: (1) “[m]aking a 

patent owner an involuntary plaintiff is not new”; 

(2) “[j]oining Star as an involuntary plaintiff protects the 

interests of both the defendants”; and (3) “Rule 19(a) 
8 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

requires the continued joinder of Star as an involuntary 

plaintiff in the infringement suit.” Id. at 1346.

The Sixth Circuit in Willingham recognized the “general rule that all co-owners of a patent must be joined as 

plaintiffs before an infringement suit can be initiated.” 

Id. at 1343 (citing Waterman v. Mackenzie, 138 U.S. 252, 

255 (1891)).2 It did not create or purport to create any 

new substantive patent law right that would trump 

application of Rule 19, however. Indeed, it expressly 

stated it was not addressing that question because it 

found any rights Star might have had on that score to 

have been waived. Id. at 1343 n.5 (comparing Provident 

Tradesmens, 390 U.S. at 118 n.13, 125 (recognizing that 

Rule 19(b) is “a valid statement of the criteria for determining whether to proceed or dismiss in the forced absence of an interested person” and that “judge made 

doctrines of compulsory joinder” do not create substantive 

rights falling outside the reach of the rule), with Gibbs v. 

Emerson Elec. Mfg. Co., 29 F. Supp. 810, 812 (W.D. Mo. 

1939) (concluding that “it appears that one joint owner or 

 

2 In Waterman, the Supreme Court explained that a 

patentee or his assignee may grant and convey to another: 

(1) the whole patent; (2) an undivided part or share of 

that exclusive right; or (3) “the exclusive right under the 

patent within and throughout a specified part of the 

United States.” 138 U.S. at 255. “A transfer of either of 

these three kinds of interests is an assignment, properly 

speaking, and vests in the assignee a title in so much of 

the patent itself, with a right to sue infringers; in the 

second case, jointly with the assignor; in the first and 

third cases, in the name of the assignee alone.” Id. 

Importantly, the “development of the practice of joining a 

party as an involuntary plaintiff was a response” to 

Waterman. 7 Charles Alan Wright et al., Federal Practice 

and Procedure § 1606 (3d ed. 2013).
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 9

coowner or tenant in common of a patent right cannot 

compel the other coowner to join in a suit for an infringement”)). 

Schering involved a dispute between two co-owners of 

a pharmaceutical patent: Schering and Roussel. Schering 

sued Zeneca for infringement, and two weeks later, Roussel granted a license to Zeneca. Schering argued that the 

terms of its co-ownership agreement with Roussel—which 

provided that, “if one of the co-owners files an infringement suit, it can call on the non-suing co-owner to provide 

‘reasonable assistance’ in connection with the litigation”—

meant that the non-suing party could not grant a license 

to a defendant or prospective defendant. Schering, 104 

F.3d at 345–46. Undertaking a contract analysis, we held 

that nothing in the agreement limited the right to grant 

licenses under the patent, but that “the grant of a license 

by one co-owner cannot deprive the other co-owner of the 

right to sue for accrued damages for past infringement.” 

Id. at 345.

Involuntary joinder was not at issue on appeal in 

Schering because, at the district court level, “Schering 

joined Roussel as an involuntary plaintiff pursuant to 

Rule 19(a).” Schering Corp. v. Zeneca Inc., 958 F. Supp. 

196, 197 (D. Del. 1996); see Schering, 104 F.3d at 346 

(noting that the “co-ownership agreement made Roussel 

subject to being named as an involuntary plaintiff in an 

infringement action brought by Schering”). Accordingly, 

this court in Schering did not address or analyze Rule 19; 

it proceeded on the assumption that joinder under Rule 

19(a) had occurred and that no objection to it had been 

raised on appeal. While we did cite the Sixth Circuit’s 

Willingham decision for the proposition that, “[o]rdinarily, 

one co-owner has the right to impede the other co-owner’s 

ability to sue infringers by refusing to voluntarily join,” 

the “impediment” to which we referred was not due to 

non-joinder or a “refus[al] to voluntarily join”—it was due 

to the co-owner’s decision to license the patent to the 
10 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

accused infringer prospectively. Schering, 104 F.3d at 

345 (citing Willingham, 555 F.2d at 1344). We explained 

that, “by granting a license to a prospective infringement 

defendant, or to a defendant that has already been sued 

for infringement, a patent co-owner can effectively deprive 

its fellow co-owner of the right to sue for and collect any 

infringement damages that accrue after the date of the 

license.” Id. (emphasis added). Again, we never said a coowner could deprive a fellow co-owner of his or her rights 

merely by not joining in an infringement action.

In Ethicon, the co-owner of the patent—Dr. Choi—

granted a “retroactive license” to the accused infringer—

U.S. Surgical—and thus could not consent to an infringement suit against it. Ethicon, 135 F.3d at 1458–59. 

Because the parties stipulated to Choi’s intervention as 

defendant-intervenor in the case, the majority neither 

cited nor discussed Rule 19. Id. at 1458. Instead, the 

court focused on the scope of the “retroactive license.” 

Specifically, the court found that: (1) “a license to a third 

party only operates prospectively;” and (2) absent agreement otherwise, “a co-owner cannot grant a release of 

another co-owner’s right to accrued damages.” Id. at 1467 

(concluding that “Choi cannot release U.S. Surgical from 

its liability for past accrued damages to Ethicon, only 

from liability to himself”).

In the context of its retroactive licensure discussion, 

the court explained that, “as a matter of substantive 

patent law, all co-owners must ordinarily consent to join 

as plaintiffs in an infringement suit.” Id. at 1468.3 The 

 

3 The court recognized two exceptions: (1) “when 

any patent owner has granted an exclusive license, he 

stands in a relationship of trust to his licensee and must 

permit the licensee to sue in his name”; and (2) “[i]f, by

agreement, a co-owner waives his right to refuse to join 

suit, his co-owners may subsequently force him to join in 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 11

court did not cite any authority for this so-called “substantive patent law,” but subsequently cited Schering for 

the proposition that one co-owner can “impede” the other 

co-owner’s ability to pursue an infringement action. Id. 

(quoting Schering, 104 F.3d at 345). As in Schering, 

however, Choi’s ability to “impede” Ethicon’s infringement 

action was not due to non-joinder, particularly since Choi 

was already a voluntary party to the case. Instead, it was 

because Choi had granted a license to U.S. Surgical. The 

court concluded that dismissal was warranted because 

“Choi did not consent to an infringement suit against U.S. 

Surgical and indeed can no longer consent due to his 

grant of an exclusive license,” and thus “Ethicon’s complaint lacks the participation of a co-owner of the patent.” 

Id. Because the court’s decision in Ethicon did not involve 

joinder or Rule 19, it cannot stand for the proposition that 

Rule 19 cannot be invoked to force joinder when no license 

impedes doing so.

The majority in Ethicon did not discuss joinder under 

Rule 19, did not purport to harmonize the requirements of 

Rule 19 with preexisting substantive patent law, and—

because the decision was focused on licensing issues—did 

not create any new principles of law applicable to future 

cases involving the involuntary joinder of patent coowners. Importantly, the Ethicon majority’s silence 

cannot be evidence of its position with respect to Rule 19, 

 

a suit against infringers.” Ethicon, 135 F.3d at 1468 n.9 

(citing Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269 

U.S. 459, 469 (1926); Willingham, 555 F.2d at 1344–45). 

As the dissent in STC.UNM points out, it makes little 

sense to say “that when an infringement suit is brought 

by an exclusive licensee, the patent owner can be joined; 

but when an infringement suit is brought by a co-owner, 

the other co-owner cannot be involuntarily joined.” 

STC.UNM, 754 F.3d at 951 (Newman, J., dissenting). 
12 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

even though the dissenting opinion discussed the rule. Id.

at 1472 (Newman, J., dissenting) (“There is no barrier to 

the involuntary joinder of a joint inventor and/or co-owner 

under Rule 19, if such is needed to bring before the court 

all persons deemed necessary to the suit.”); see United 

Haulers Ass’n v. Oneida-Herkimer Solid Waste Mgmt. 

Auth., 261 F.3d 245, 260 (2d Cir. 2001) (“[W]e require 

more than the Court’s silence on this point before concluding that it either rejected or accepted the public/private 

distinction advocated by the concurring and dissenting 

opinions.”).

Although our Ethicon decision was not based on Rule 

19, we subsequently stated that it “explicitly held that 

Rule 19 does not permit the involuntary joinder of a 

patent co-owner in an infringement suit brought by 

another co-owner.” DDB Techs., L.L.C. v. MLB Advanced 

Media, L.P., 517 F.3d 1284, 1289 n.2 (Fed. Cir. 2008) 

(citing Ethicon, 135 F.3d at 1468). It is unclear, however, 

why the court in DDB Technologies would say that Ethicon made an explicit holding with respect to Rule 19 when 

it was not even mentioned in the majority opinion. In any 

event, the reference to Ethicon in DDB Technologies was 

dictum because the sole issue before the court in that case 

dealt with entitlement to jurisdictional discovery. Id. at 

1286 (“[W]e hold that the district court erred in denying 

DDB’s request for jurisdictional discovery.”).4

 

4 Other decisions from this court have perpetuated 

the idea that all co-owners must ordinarily join as plaintiffs in an infringement suit, but, again, Rule 19(a) was 

neither raised nor addressed in those cases. See Isr. BioEng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264 (Fed. 

Cir. 2007) (citing Ethicon and Schering to find that “one 

co-owner has the right to limit the other co-owner’s ability 

to sue infringers by refusing to join voluntarily in the 

patent infringement suit”); Int’l Nutrition Co. v. Horphag 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 13

Tracing the origin of our so-called rule of substantive 

patent law makes clear that, prior to our decision in 

STC.UNM v. Intel Corp., 754 F.3d 940 (Fed. Cir. 2014), 

we had never explicitly held that one patent co-owner 

cannot involuntarily join the other. Neither Schering nor 

Ethicon made any pronouncements on involuntary joinder 

that were necessary to the resolution of those cases. 

There is no preexisting federal common law supporting 

the court’s declaration in STC.UNM of a substantive 

patent right that wholly trumps application of Rule 19.

Moreover, it is well established that, absent any 

agreement to the contrary, “each of the joint owners of a 

patent may make, use, offer to sell, or sell the patented 

invention within the United States, or import the patented invention into the United States, without the consent 

of and without accounting to the other owners.” 35 U.S.C. 

§ 262. Given these rights, the Ethicon court declared that 

“the congressional policy expressed by section 262 is that 

patent co-owners are ‘at the mercy of each other.’” Ethicon, 135 F.3d at 1468 (quoting Willingham, 555 F.2d at 

1344). Nothing in § 262 suggests that one co-owner can 

deprive the others of their rights to enforce the patent. 

Indeed, we have recognized that “[a] patentee’s right to 

exclude is a fundamental tenet of patent law.” Edwards 

Lifescis. AG v. CoreValve, Inc., 699 F.3d 1305, 1314 (Fed. 

Cir. 2012) (citations omitted). And § 262 specifically 

provides that each co-owner has an independent right to 

 

Research Ltd., 257 F.3d 1324, 1331 (Fed. Cir. 2001) (citing 

Ethicon for the proposition that United States patent law 

“requires that all co-owners normally must join as plaintiffs in an infringement suit”). Mere repetition of dicta—

without any accompanying analysis and without consideration of Rule 19—cannot give rise to a substantive 

patent right sufficient to overcome application of that 

rule. 
14 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

practice the patent. It therefore seems inconsistent to say 

that each co-owner has an independent right to practice 

the patent, but that they may prevent one another from 

enforcing the fundamental right of exclusion solely because they “prefer[] to take a neutral position.” See 

STC.UNM, 754 F.3d at 943.

Finally, the Patent Act provides that “[a] patentee 

shall have remedy by civil action for infringement of his 

patent.” 35 U.S.C. § 281 (emphasis added). In other 

words, each co-owner has a right to file a civil action to 

enforce the patent. But the effect of our current precedent

is that, if a patent co-owner refuses to join the infringement suit voluntarily as a plaintiff, it can prevent the 

other owner from obtaining judicial relief for accrued 

damages. If that were the case, then § 281’s statutorilymandated right to a civil action would have little meaning. Accordingly, while there may be some other support 

for our precedent’s so-called overriding “substantive right” 

against involuntary joinder in patent infringement cases, 

our decisions have provided no statutory basis for this 

rule, which actually appears inconsistent with several 

provisions of the Patent Act. 

Rather than once again exempting patent law from 

the rules that govern all federal litigation, we should 

either: (1) clarify the basis for our so-called substantive 

right against involuntary joinder in patent infringement 

cases and explain why it can overcome the dictates of 

Rule 19; or (2) hold that Rule 19, including the provisions 

for involuntary joinder set forth therein, applies to cases 

such as this one. For these reasons, I respectfully suggest 

that our Rule 19 precedent should be reconsidered en 

banc by this court. Because I must abide by that precedent in deciding this case, however, I concur in the judgment.
United States Court of Appeals 

for the Federal Circuit ______________________ 

ADVANCED VIDEO TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

HTC CORPORATION, HTC AMERICA, INC., 

BLACKBERRY LTD, BLACKBERRY 

CORPORATION, MOTOROLA MOBILITY LLC,

Defendants-Appellees

______________________ 

2016-2309, 2016-2310, 2016-2311

______________________ 

Appeals from the United States District Court for the 

Southern District of New York in Nos. 1:15-cv-04626-CM, 

1:15-cv-04631-CM, 1:15-cv-04632-CM, Judge Colleen 

McMahon.

______________________ 

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. Joint inventor Vivian Hsiun 

never had co-ownership of the ’788 Patent, contrary to the 

majority opinion. By her Employment Agreement, her 

invention was the property of her employer; she was not 

the owner, and she could not acquire ownership simply by 

refusing to sign a separate “assignment” document.

Vivian Hsiun was employed on the basis of a detailed 

and thorough Employment Agreement, whereby all of her 

inventions and other product of her employment are 

owned by the employer. After the ’788 Patent application
2 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

was filed, of which she is listed as one of three joint inventors, Ms. Hsiun declined to sign the PTO’s form of assignment document. This lapse was discovered by the 

defendants during this litigation, and the defendants

moved to dismiss for lack of standing to enforce the patent. The district court granted the motion and the panel 

majority agrees, finding sua sponte that Ms. Hsiun owns 

one-third of the ’788 Patent.

However, the Employment Agreement placed ownership of the employee’s inventions with the employer. In 

view of the Employment Agreement, a separate assignment document is not necessary to confirm that the 

employee has no ownership of the ’788 Patent. Nor has 

the employee asserted any such ownership.

DISCUSSION

The Employment Agreement contains several provisions concerning ownership of inventions made by Ms. 

Hsiun during her employment, as follows:

1.

Section 2.b provides that all inventions made 

during employment will be disclosed and 

held in trust and assigned to the Company

Agreement Section 2.b obligates Ms. Hsiun to disclose

and to assign all her right, title, and interest in all inventions that she makes while employed by the Company:

2.b. Inventions and Original Works Assigned to 

the Company. I agree that I will promptly make 

full written disclosure to the Company, will hold 

in trust for the sole right and benefit of the Company, and will assign to the Company all my 

right, title, and interest in and to any and all inventions, original works of authorship, developments, improvements or trade secrets which I 

may solely or jointly conceive or develop or reduce 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 3

to practice, or cause to be conceived or developed 

or reduced to practice, during the period of time I 

am in the employ of the Company. . . .

Empl. Agmt., J.A. 258. On Ms. Hsiun’s refusal to sign the 

PTO’s standard assignment form, the PTO accepted the 

Employment Agreement as showing ownership by the 

employer. Ms. Hsiun did not object to the procedures in 

the PTO, and the face of the patent lists AVC Technology, 

Inc. as “Assignee.” Ms. Hsiun did not object, and has 

never asserted any ownership interest in the ’788 Patent. 

2.

Section 2.c states that invention records are 

the property of the Company

In conformity with the other provisions on ownership 

of inventions made by Ms. Hsiun during her employment, 

the Employment Agreement provides that all invention

records are the property of the employer: 

2.c. Maintenance of Records. I agree to keep and 

maintain adequate and current written records of 

all inventions and original works of authorship 

made by me (solely or jointly with others) during 

the term of my employment with the Company. 

The records will be in the form of notes, sketches, 

drawings, and any other format that may be specified by the Company. The records will be available to and remain the sole property of the

Company at all times. 

Empl. Agmt., J.A. 259. It is not disputed that the ’788 

invention was made during Ms. Hsiun’s employment. She 

has asserted no ownership or any other rights to her 

invention records.

3.

Section 2.e states the employee’s obligation to 

assist in obtaining patents
4 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

This clause of the Employment Agreement refers to 

patents on inventions “assigned hereunder” to the employer: 

2.e. Obtaining Letters Patent, Copyrights, and 

Mask Work Rights. I agree that my obligation to 

assist the Company to obtain United States or 

foreign letters patent, copyrights, or mask work 

rights covering inventions, works of authorship, 

and mask works, respectively, assigned hereunder 

to the Company shall continue beyond the termination of my employment, but the Company shall 

compensate me at a reasonable rate for time actually spent by me at the Company’s request on 

such assistance. . . .

Empl. Agmt., J.A. 259. The words “assigned hereunder” 

and the continuing obligations after termination of employment conform to the mutual intent and understanding, of employer and employee, with respect to the 

Company’s ownership of inventions made during her 

employment. 

Ms. Hsiun did not object to the Company’s filing of 

this patent applications naming her as a joint inventor; 

such filing was authorized by the agreed right of ownership of her inventions.

4.

Section 2.e provides for action by the employer in absence of the employee’s signature on 

patent documents

Ms. Hsiun agreed that if her signature is unobtainable for “inventions or other rights assigned to the Company,” the Company may act in her stead:

2.e. [continued]. . . . If the Company is unable because of my mental or physical incapacity or for 

any other reason to secure my signature to apply 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 5

for or to pursue any application for any United 

States or foreign letters patent, copyrights, or 

mask work rights covering inventions or other 

rights assigned to the Company as above, then I 

hereby irrevocably designate and appoint the 

Company and its duly authorized officers and 

agents as my agent and attorney in fact, to act for 

and in my behalf and stead to execute and file any 

such applications and to do all other lawfully 

permitted acts to further the prosecution and issuance of letters patent, copyrights, and mask 

work rights with the same legal force and effect as 

if executed by me. . . .

Empl. Agmt., J.A. 259–60. This provision was a basis of 

the Company’s prosecution of the ’788 application, and 

issuance of the ’788 Patent naming Ms. Hsiun as a joint 

inventor and AVC Technology as assignee. 

5.

Section 2.b requires the employee to hold all 

inventions in trust for the Company

2.b. I agree that I . . . will hold in trust for the

sole right and benefit of the Company, and will 

assign to the Company all my right, title, and interest in and to any and all inventions, . . . during 

the period of time I am in the employ of the Company.

Empl. Agmt., J.A. 258. My colleagues on this panel 

concede that the trust provision of the Employment 

Agreement may apply, Maj. Op. at 7, but nonetheless hold 

that the trust provision is ineffective to establish that Ms. 

Hsiun held her inventions in trust “for the sole right and 

benefit of the Company.” My colleagues state that it is 

necessary for the beneficiary to sue the trustee in order to 

obtain the benefit of the trust. No supporting authority is 

cited, or relates to these facts.
6 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

The parties’ briefs discuss a California case in which 

the court held that a trust was not created on a dying 

man’s oral instruction to pay his hospital bill and dispose 

of his funds, the court stating in Monell v. College of 

Physicians & Surgeons of San Francisco, 198 Cal. App. 2d 

38, 48–49 (1961), that “it is essential to the creation of a 

valid express trust that some estate or interest should be 

conveyed to the trustee and, when the instrument creating the trust is other than a will, that such estate or 

interest must pass immediately, although the enjoyment 

of the cestui may commence in the future.” The Monell

court held that the oral instruction did not create a trust

when the attempted disposition was testamentary in 

nature, id. at 51, and that the disposition had to comply 

with the formalities of wills. Id. To the extent that the

Monell case is relevant to the trust provision of the Employment Agreement, it supports the immediate conveyance of inventions to the trust, for the benefit of the 

Company, in accordance with the signed Employment 

Agreement. 

The panel majority also states that under California 

law the beneficiary of the trust is not the real party in 

interest. However, California law accords with the general law of trusts, as represented by Kadota Fig Ass’n of 

Producers v. Case-Swayne Co., 73 Cal. App. 2d 796, 801 

(1946) (“The real parties in interest are the beneficiaries 

under the business agreement, and not the trustees or 

directors.”). Ms. Hsiun is the trustee of her inventions, 

which vest in trust immediately on creation of the invention. The employer is the beneficiary of her inventions as 

established by the Employment Agreement. The beneficiary is not denied its beneficial rights if the trustee is 

absent or inactive. See id. (“The reason for requiring an 

action to be prosecuted in the name of the real parties in 

interest (Code Civ. Proc., § 367) is to save the defendants 

from a multiplicity of suits . . . .”).
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 7

At a minimum, the trust provision further demonstrates the mutual intent and understanding that Ms.

Hsiun’s inventions made during her employment are for 

the sole benefit of the employer. 

6.

Section 2.e provides a “waiver and quitclaim” of infringement claims of patents “assigned hereunder”

The Employment Agreement contains the following 

waiver and quitclaim provision:

2.e. [continued] . . . I hereby waive and quitclaim 

to the Company any and all claims, of any nature 

whatsoever, which I now or may hereafter have 

infringement of any patents, copyrights, or mask 

work rights resulting from any such application 

assigned hereunder to the Company.

Empl. Agmt., J.A. 260. 

The waiver and quitclaim provisions comport with the 

mutual intent and understanding that Ms. Hsiun retained no ownership of patents on her inventions “assigned hereunder to the Company.” The quitclaim 

assures that any rights the grantor had, are transferred

to the grantee of the property. California precedent is 

clear. E.g., City of Manhattan Beach v. Superior Court, 

914 P.2d 160, 164 (1996) (“A quitclaim deed transfers 

whatever present right or interest the grantor has in the 

property.”); see generally, “Quitclaim,” Black’s Law Dictionary (4th ed. 1968) (a quitclaim is “intended to pass 

any title, interest, or claim which the grantor may have in 

the premises”).

The panel majority states that since the ’788 Patent 

was not assigned to the Company, “the quitclaim provision has no application.” Maj. Op. at 9. To the contrary: 

if indeed the patent was not individually assigned in a 
8 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

special document, the “quitclaim to the Company” assures

transfer of the property to the Company. 

A quitclaim does not require that the property was already assigned, for in such case no quitclaim would be 

needed. However, the quitclaim does require that “any 

and all claims” that may “now or hereafter” exist, are 

“assigned hereunder to the Company.”

This provision further renders impossible that Ms. 

Hsiun now owns one-third of the ’788 Patent, for any such 

ownership was quitclaimed to the employer. 

7.

Section 5 requires the employee to execute all 

documents needed to carry out the Agreement

The record before us does not explain why Ms. Hsiun

refused to sign the provided PTO assignment form, for the 

Employment Agreement is explicit as to the employee’s 

obligations to execute any required documents: 

5. Representations. I agree to execute any proper 

oath or verify any proper document required to 

carry out the terms of this Agreement. I represent that my performance of all the terms of this 

Agreement will not breach any agreement to keep 

in confidence proprietary information acquired by 

me in confidence or in trust prior to my employment by the Company. I have not entered into, 

and I agree I will not enter into, any oral or written agreement in conflict herewith.

Empl. Agmt., J.A. 260–61. 

Throughout this litigation, there is no assertion by 

Ms. Hsiun of any ownership interest in the ’788 Patent, or 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 9

any negation of her obligations set forth in the Employment Agreement.1

8.

Other provisions of the Employment Agreement comport with the mutual understanding of employer ownership of employee 

inventions

Several other provisions of the Employment Agreement relate to inventions, and further implement the 

understanding of employer ownership of the employee’s 

work product: 

Section 3 prohibits conflicting future employment. 

Section 4 provides for ownership by the Company of 

all documents and property created by the employee. 

Section 6.b states that this is the entire agreement

and cannot be changed except “in writing signed by the

party to be charged.”

Section 6.c provides for severability.

Section 6.d binds the employee’s heirs and executors

for the benefit of the Company, its successors, and its 

assigns. 

Section 6.e provides that the Agreement survives the 

termination of employment, and benefits the Company’s 

successors and assigns. 

 

1 The panel majority states that “the terms of the 

Employment Agreement provide otherwise,” the “otherwise” being “unambiguous provisions” in the Employment 

Agreement purportedly negating assignment to the 

employer. Maj. Op. at 9. No citation is offered, and I 

have searched in vain for any such unambiguous provision.
10 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

Section 7 requires the employee to identify all preemployment inventions—there were none.

It is inconceivable that the parties intended that unless a separate assignment document was signed as to 

each and every aspect of the employee’s work product, the 

provisions of the Employment Agreement would not 

apply. 

9. 

Section 6.a of the Agreement states that California law applies

California contract law provides:

Cal. Civ. Code § 1643: A contract must receive 

such an interpretation as will make it lawful, operative, definite, reasonable, and capable of being 

carried into effect, if it can be done without violating the intention of the parties.

The record contains no challenge to the mutual intent 

and understanding of the parties to the Employment 

Agreement. The provisions of the Employment Agreement demonstrate, over and over, the intent and understanding that Ms. Hsiun’s inventions made as an 

employee are the property of the employer. There are no 

contrary provisions, and no contrary evidence was presented in this action. 

Every contract provision, and the entirety of the Employment contract, show this mutuality of intent. The 

intention of the parties must be respected and “intent is 

to be inferred, if possible, solely from the written provisions of the contract.” People ex. rel. Lockyer v. R.J. 

Reynolds Tobacco Co., 107 Cal. App. 4th 516, 525 (2003). 

California law provides no contrary authority, and none 

was asserted in this case.

It is not reasonable now to hold that the Employment 

Agreement fails in its intended purpose, for every provi-
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 11

sion of the Agreement accords with and implements the 

intent that the employee’s inventions are the property of 

the employer. 

10.

The Delaware Chancery Court quitclaimed 

and assigned the ’788 Patent to the plaintiff

The record further demonstrates that ownership of 

the ’788 Patent, by Ms. Hsiun’s employer and its successors, was recognized in corporate proceedings in Delaware.

After a challenge to the transfer of the ’788 Patent, a 

Receiver was appointed by the Chancery Court, who held 

as follows:

I, Joseph Cicero, . . . have quitclaimed, assigned, transferred, set over and conveyed and do 

hereby quitclaim, assign, transfer, set over and 

convey unto Advanced Video Technologies LLC, a 

New York limited liability company (“Assignee”), 

its successors, and assigns, any and all right, title, 

and interest to United States Patent No. 

5,781,788 (the “Patent”) held and enjoyed by Assignor, for the entire term of the Patent, including 

any reissues, reexaminations, and extensions 

thereof, including the right to sue for and recover 

damages in respect of past acts of infringement. 

This assignment includes, but is not limited to, all 

Assignor’s right to all income, royalties, damages 

and payments now or hereafter due and payable, 

and in and to all causes of action, either in law or 

in equity, and the right to sue and counterclaim 

for and collect past and continuing damages for 

infringement. The right, title and interest conveyed in this Assignment is to be held and enjoyed 

by Assignee and Assignee’s successors and assigns 

as fully and exclusively as it would have been held 
12 ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION

and enjoyed by Assignor had this assignment not 

been made.

[signed] Joseph B. Cicero, Esq., Date: 6/5/15

Receiver for AVC Technology, Inc.

J.A. 130. The record does not show any appeal by any 

person or other entity from the Delaware Court’s determination, or any challenge to or dispute with this establishment of ownership of the ’788 Patent by Advanced 

Video Technologies. 

11.

Federal Circuit precedent does not contravene the Employment Agreement

Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456

(Fed. Cir. 1998) does not support the position that Ms. 

Hsiun owns one-third of the ’788 Patent. The situations

and rulings are widely different. In Ethicon, a consultant 

who had not agreed to assign his inventions made a 

contribution to a claim, and the court held that the consultant owned an undivided interest in the patent. Id. at 

1464. Here, in contrast, ownership of Ms. Hsiun’s inventions is established by the Employment Agreement. 

Unlike Ms. Hsiun’s contractual agreement, in Ethicon

there was no employment agreement, no agreement as to 

ownership of inventions, no holding in trust for the employer, no waiver and quitclaim to the employer. The 

ruling in Ethicon does not govern ownership of Ms. 

Hsiun’s inventions. 

Nor does the ruling in Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574 (Fed. Cir. 1991) apply to this 

case. In Arachnid a consultant had agreed by contract 

that his inventions “will be assigned” to the company, but 

he did not execute an assignment. The court held that 

although equitable title may have been acquired by the 

company, legal title was needed before damages could be 

obtained. Id. at 1579. The gaps that the court perceived 
ADVANCED VIDEO TECHNOLOGIES v. HTC CORPORATION 13

in the consulting agreement in Arachnid are filled in the 

Employment Agreement signed by Ms. Hsiun. Her

Agreement not only provides for ownership by the employer of all inventions made by the employee, but imposes a trust and implements a quitclaim in favor of the 

employer. See Akazawa v. Link New Tech. Int’l, Inc., 520 

F.3d 1354, 1356 (Fed. Cir. 2008) (“[T]here is nothing that 

limits assignment as the only means for transferring 

patent ownership. . . . [O]wnership of a patent can be 

changed by operation of law.”).

Ms. Hsiun’s Employment Agreement is directly controlled by contract law. The Employment Agreement that 

she signed established ownership by the employer of the 

’788 Patent by way of clear contract provisions implementing the intent and understanding and agreement of 

employer and employee, as a condition of the employment. 

There is no ambiguity, and Ms. Hsiun asserts no ownership in the ’788 Patent.

CONCLUSION

The Employment Agreement established the terms 

and conditions of Ms. Hsiun’s employment. These terms 

and conditions include ownership by the employer of all 

inventions made by the employee during her employment. 

My colleagues’ award to Ms. Hsiun of one-third of the ’788 

Patent cannot be supported, under any view of any law. I 

respectfully dissent.