United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ABRAXIS BIOSCIENCE, INC., 

Plaintiff-Appellee, 

v. 

NAVINTA LLC, 

Defendant-Appellant. 

__________________________ 

2009-1539 

__________________________ 

Appeal from the United States District Court for the 

District of New Jersey in case no. 07-CV-1251, Judge Joel 

A. Pisano. 

ON PETITION FOR PANEL REHEARING AND 

REHEARING EN BANC 

__________________________ 

Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON, 

GAJARSA, LINN, DYK, PROST, MOORE, and O’MALLEY, 

Circuit Judges. 

PER CURIAM. 

 GAJARSA, Circuit Judge, with whom LINN and DYK, 

Circuit Judges, join, concurs in the denial of the petition 

for rehearing en banc. 

 O’MALLEY, Circuit Judge, with whom NEWMAN, Circuit 

Judge, joins, dissents from the denial of the petition for 

rehearing en banc. 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 2

__________________________ 

 RICHARD DE BODO, DLA Piper LLP (US), of Los Angeles, California, filed a combined petition for panel rehearing and rehearing en banc for plaintiff-appellee. With 

him on the petition was SIEGMUND Y. GUTMAN. 

 MEREDITH MARTIN ADDY, Brinks Hofer Gilson & 

Lione, of Chicago, Illinois, filed a response to the petition 

for defendant-appellant. With her on the response were 

MARK H. REMUS, LAURA A. LYDIGSEN, and LUKE A.

PARSONS. 

__________________________ 

O R D E R 

A combined petition for panel rehearing and rehearing en banc was filed by Plaintiff-Appellee, and a response 

thereto was invited by the court and filed by DefendantAppellant. 

The petition for panel rehearing was referred to the 

panel that heard the appeal, and thereafter the petition 

for rehearing en banc and response were referred to the 

circuit judges who are authorized to request a poll 

whether to rehear the appeal en banc. A poll was requested, taken, and failed. 

Upon consideration thereof, 

IT IS ORDERED THAT: 

(1) The Plaintiff-Appellee’s petition for panel rehearing is denied. 

(2) The Plaintiff-Appellee’s petition for rehearing en 

banc is denied. 

(3) The mandate of the court will issue on March 21, 

2011. 
3 ABRAXIS BIOSCIENCE v. NAVINTA LLC

FOR THE COURT

March 14, 2011

Date 

/s/ Jan Horbaly 

Jan Horbaly 

Clerk 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ABRAXIS BIOSCIENCE, INC., 

Plaintiff-Appellee, 

v. 

NAVINTA LLC, 

Defendant-Appellant. 

__________________________ 

2009-1539 

__________________________ 

Appeal from the United States District Court for the 

District of New Jersey in Case No. 07-CV-1251, Judge 

Joel A. Pisano. 

 GAJARSA, Circuit Judge, with whom LINN and DYK, 

Circuit Judges, join, concurring in the denial of the petition for rehearing en banc. 

__________________________ 

I concur in this court’s decision not to rehear this case 

en banc because this is not an issue that rises to the level 

of importance of en banc hearing by this court. Contrary 

to the dissent, the majority opinion here does not create a 

federal common law that broadly displaces state law in 

the area of patent assignments. 

On April 26, 2006, AstraZeneca (“AZ-UK”) and 

Abraxis entered into an Asset Purchase Agreement. The 

agreement provided that AZ-UK “shall cause” the transfer 

of the three asserted patents to Abraxis. However, at that 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 2

time, those patents were owned by Astra Läkemedel 

Aktiebolag (“Astra L”) and AstraZeneca AB (“AZ-AB”), not 

AZ-UK. On June 28, 2006, AZ-UK attempted to assign 

the patents to Abraxis, but failed because AZ-UK could 

not assign what it did not own. On March 15, 2007, 

Abraxis sued Navinta LLC for patent infringement. On 

the same day, AZ-AB and Astra L assigned the patentsat-issue to AZ-UK, but not to Abraxis. Subsequently, on 

November 12, 2007, AZ-UK finally assigned the three 

patents to Abraxis. 

The analysis is simple. The panel, following Federal 

Circuit law, concluded that a party has no standing under 

Article III to bring an action if it does not own the patents 

when it files the action. 35 U.S.C. § 261 requires assignments to be in writing. In this case, Abraxis did not 

possess a written assignment of the patents-in-suit from 

the owner thereof at the time suit was filed. 

The position advocated by the dissent would apply 

state law to effectively preempt federal law. When Congress has adopted a statutory scheme to apply in a particular field, federal law preempts state law. See, e.g., 

Campbell v. Hussey, 368 U.S. 297 (1961); Rice v. Santa Fe 

Elevator Corp., 331 U.S. 218, 230 (1947). The dissent 

suggests that New York state law pre-empts federal law. 

The position that AZ-UK’s failed assignment to Abraxis 

on June 28, 2006 can be resurrected by a later transfer of 

the patents to AZ-UK on March 15, 2007 by ostensibly 

nunc pro tunc assignments is insufficient to avoid section 

261 and the federal law of standing. Notwithstanding 

New York law, it is not possible to transfer an interest in 

a patent unless one owns the patents at the time of the 

transfer. Here, it is clear that AZ-UK did not own the 

patents and the intent of the parties cannot correct that 

fatal error. The district court, purportedly acting under 

New York state law, allowed the parties’ intent to trump 
3 ABRAXIS BIOSCIENCE v. NAVINTA LLC

the clear language of the agreements. State law cannot 

retroactively override federal law to revive failed agreements, thereby conferring standing in federal court. 

The panel majority correctly applied this court’s 

precedent and federal law to find that Abraxis lacked 

standing and could not correct this deficiency after the 

inception of this suit. This case does not conflict with our 

precedent or warrant en banc review. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ABRAXIS BIOSCIENCE, INC., 

Plaintiffs-Appellee, 

v. 

NAVINTA LLC, 

Defendants-Appellant. 

__________________________ 

2009-1539 

__________________________ 

Appeal from the United States District Court for the 

District of New Jersey in Case No. 07-CV-1251, Judge 

Joel A. Pisano 

O’MALLEY, Circuit Judge, with whom NEWMAN, Circuit Judge, joins, dissenting from the denial of the petition for rehearing en banc. 

__________________________ 

I respectfully dissent from the court’s denial of Appellee’s Petition for Rehearing En Banc. The panel majority’s creation of federal common law to govern 

assignments of existing patents conflicts not only with our 

precedent, but with longstanding Supreme Court precedent restricting judicial preemption of state law. The 

Supreme Court has “uniformly” proscribed the judicial 

creation of “a special federal rule” absent a “significant 

conflict” between state law and “some federal policy or 

interest.” O’Melveny & Myers v. FDIC, 512 U.S. 79, 87 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 2

(1994) (citing Wallis v. Pan Am. Petroleum Corp., 384 U.S. 

63, 68 (1966)). Though the panel majority did not identify 

such a conflict, by virtue of this decision, this court now 

requires the application of Federal Circuit contract law to 

transfers of existing patent rights, without regard for the 

state law jointly chosen by the contracting parties. 

The consequences of this decision are not slight. This 

creation of a new body of law to govern transfers of patent 

rights – one applicable in this Circuit only – will disrupt 

substantial expectations with respect to the ownership of 

existing patents and impose unnecessary burdens on 

future transfers thereof. Parties may now be barred from 

pursuing claims for infringement of patents they indisputably own under state law, and choice of law provisions 

in large-scale asset purchase agreements such as that at 

issue here will become meaningless where patents are 

involved. 

Because this decision conflicts with Supreme Court 

precedent and needlessly destabilizes parties’ expectations, we should take the opportunity to correct this 

flawed precedent. 

I. 

Though this case was nominally about Article III 

standing, that inquiry turned entirely on the question of 

who owned the asserted patents when suit was filed. The 

standing question, and Abraxis’s right to pursue its 

claims, was dependent upon whether a series of contracts 

purporting to transfer the patents were effective to vest 

title to those patents in Abraxis before it filed suit. It is 

undisputed that the parties intended that the contracts be 

governed by New York law. Interpreting the contracts 

under New York law, the district court found that a 

subset of those agreements, all of which were executed 

before filing, did operate to vest title in Abraxis before it 
3 ABRAXIS BIOSCIENCE v. NAVINTA LLC

brought suit. The majority did not dispute this finding. 

Rather, it ignored New York law when interpreting the 

contracts, and chose, instead, to create a new federal 

common law rule to assess the validity of patent transfers, relying on dicta in DDB Technologies v. MLB Advanced Media, 517 F.3d 1284 (Fed. Cir. 2008). Applying 

this new law, the majority concluded that Abraxis did not 

obtain title until several months after filing suit and, 

thus, lacked standing to pursue the three years of litigation on the merits that followed the District Court’s 

standing ruling. As a judicially created federal rule tied 

to no conflict between state law and a federal policy, 

however, the majority’s new rule is the type of rule rejected regularly by the Supreme Court. 

The Supreme Court has held consistently that cases 

justifying the “judicial creation of a special federal rule” 

displacing state law are “few and restricted, limited to 

situations where there is a significant conflict between 

some federal policy or interest and the use of state law.” 

O’Melveny & Myers, 512 U.S. at 87 (citing Wheeldin v. 

Wheeler, 373 U.S. 647, 651 (1963)) (internal quotations 

omitted). “[F]ederal courts, unlike their state counterparts, are courts of limited jurisdiction that have not been 

vested with open-ended lawmaking powers.” Northwest 

Airlines v. Transp. Workers Union, 451 U.S. 77, 95 (1981). 

Accordingly, whether “latent federal power should be 

exercised to displace state law is primarily a decision for 

Congress.” Wallis, 384 U.S. at 68.1 Even where, as here, 

 1 The Supreme Court’s decision in Wallis, 384 U.S. 

63, is instructive. There, in the context of contracts 

transferring interests in federally granted land, rather 

than patent, rights, the Court held that state, rather than 

federal, law should apply. Reversing a Fifth Circuit 

decision applying federal common law to the transfer of 

leases obtained under the Mineral Leasing Act of 1920, 

the Supreme Court held: “However fitting this approach 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 4

“there is related federal legislation in an area,” it “must 

be remembered that Congress acts against the background of the total corpus juris of the states.” Id. (internal quotations omitted). Accordingly, matters left 

unaddressed by a comprehensive statutory scheme “are 

presumably left subject to the disposition provided by 

state law.” O’Melveny & Myers, 512 U.S. at 86. 

This rule applies with no less force when the federal 

interest at issue is expressed in the Patent Act or relates 

to intellectual property rights granted thereunder. See

Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979); 

Kewanee Oil v. Bicron, 416 U.S. 470 (1974). In Aronson, 

the Supreme Court reversed the Eighth Circuit’s determination that federal law should displace state contract 

law where patent rights are at issue. The Supreme Court 

explained that “[c]ommercial agreements traditionally are 

the domain of state law,” and that state law “is not displaced merely because the contract relate[s] to intellectual 

property which may or may not be patentable . . . .” Id. at 

262 (citations omitted). “In this as in other fields, the 

question of whether federal law pre-empts state law 

involves a consideration of whether that law stands as an 

obstacle to the accomplishment and execution of the full 

 

may be where a State interposes unreasonable conditions 

on assignability [of the federally granted leases], it can 

have no force in this instance because Louisiana concededly provides a quite feasible route for transferring any 

mineral lease or contracting to do so, namely, by written 

instrument.” Wallis, 384 U.S. at 69-70. The mineral 

lease rights at issue in Wallis were no less federal in 

origin than the patent rights at issue here and, as the 

Fifth Circuit noted, the right to assign those leases was 

itself a creature of federal statute. The Supreme Court 

was unconvinced, however, that the origin of the rights at 

issue was sufficient to displace state law governing their 

transfer. 
5 ABRAXIS BIOSCIENCE v. NAVINTA LLC

purposes and objectives of Congress. If it does not, state 

law governs.” Id. at 262 (citations and quotations omitted). The Court then examined whether enforcement of 

the contract in that action was inconsistent with the 

purposes of the federal patent system, i.e., (1) “to foster 

and reward invention”; (2) “to promote[] disclosure of 

inventions to stimulate further innovation and to permit 

the public to practice the invention once the patent expires”; and (3) “to assure that ideas in the public domain 

remain there for the free use of the public.” Id. (citing 

Kewanee Oil Co. v. Bicron Corp., 416 U.S. at 480-81 

(1974)). Concluding that it was not, the Court reversed 

the Eighth Circuit’s holding that “patent law principles 

governed [the parties’] contract,” and endorsed the district 

court’s application of state law. Id. at 261, 266. 

Thus, we must begin with the proposition that state 

law governs the relationship between contracting parties, 

even vis-à-vis their ownership of patent rights, where 

application of state law does not create a “significant 

conflict” with federal policies or interests articulated in a 

Congressional Act.2

 2 The field preemption cases cited by the concurrence are inapposite. Where Congress legislates in a field 

“which States have traditionally occupied,” such as contract law, we must “start with the assumption that the 

historic police powers of the States were not to be superseded by the Federal Act unless that was the clear and 

manifest purpose of Congress.” Rice v. Santa Fe Elevator 

Corp., 331 U.S. 218, 230 (1947) (emphasis added). Where, 

as here, Congress has not expressly stated such a purpose, it may be inferred under one of two theories. See

California Federal Sav. and Loan Ass’n v. Guerra, 479 

U.S. 272, 281 (1987). Under the theory of field preemption, a “scheme of federal regulation may be so pervasive 

as to make reasonable the inference that Congress left no 

room for the State to supplement it.” Rice, 331 U.S. at 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 6

II.

Consistent with these principles, we have long held 

that “legal title to a patent is a question of state law.” See

Enovsys LLC v. Nextel Commc’ns, Inc., 614 F.3d 1333, 

1342 (Fed. Cir. 2010); see also Larson v. Correct Craft, 

Inc., 569 F.3d 1319, 1327 (Fed. Cir. 2009) (holding that 

“questions of patent ownership are determined by state 

law”); Euclid Chem. Co. v. Vector Corrosion Techs., Inc., 

561 F.3d 1340, 1343 (Fed. Cir. 2009) (“Construction of 

patent assignment agreements is a matter of state contract law.”) (quoting Mars, Inc. v. Coin Acceptors, Inc., 527 

F.3d 1359, 1370 (Fed. Cir. 2008)); MyMail, Ltd. v. Am. 

Online, Inc., 476 F.3d 1372, 1376 (Fed. Cir. 2007) (“[T]he 

only question is one of ownership. State law, not federal 

law, addresses such property ownership disputes.”); Cook 

Biotech, Inc. v. Acell, Inc., 460 F.3d 1365, 1373 (Fed. Cir. 

2006) (“Assignment of ownership is governed by state law 

doctrines.”); Minco Inc. v. Combustion Eng’g, 95 F.3d 

1109, 1117 (Fed. Cir. 1996) (“[P]roper construction of . . . 

 

230. Nothing in 35 U.S.C. § 261, nor any other provision 

of the Patent Act, however, supports an inference that 

Congress had a “clear and manifest purpose” to “completely displace state regulation” of assignment agreements. Guerra, 479 U.S. at 281. Indeed, by providing 

that, subject to the provisions of Title 35, “patents shall 

have the attributes of personal property,” § 261 confirms 

that Congress intended for state contract law to govern 

patent assignments, just as it had always governed transfers of other forms of personal property. 35 U.S.C. § 261. 

The only requirement imposed by § 261 is that such 

agreements be in writing. Because Congress expressed no 

clear intent to completely displace state contract law 

when patents are involved, see Aronson, 440 U.S. at 262, 

preemption is justified only to the extent that state law 

conflicts significantly with the writing requirement, or 

some other federal policy or interest. See Guerra, 479 

U.S. at 281. 
7 ABRAXIS BIOSCIENCE v. NAVINTA LLC

assignment agreements” is “a matter of state contract 

law.”); cf. Power Lift, Inc. v. Weatherford Nipple-Up 

Systems, Inc., 871 F.2d 1082, 1085 (Fed. Cir. 1989) (“A 

license agreement is a contract governed by ordinary 

principles of state contract law.”). 

Admittedly, our panel decision in DDB Technologies

established a limited exception to this longstanding 

precedent for agreements assigning rights to future 

inventions where the question is “whether a patent assignment clause creates an automatic assignment or 

merely an obligation to assign.” 517 F.3d at 1290. Reasoning that this question is “intimately bound up with the 

question of standing in patent cases,” the majority in 

DDB Technologies held that federal law should displace 

state contract law when this question arises. Id. Until 

this case, however, our decisions following DDB Technologies have invoked this exception and applied federal law 

only to resolve the narrow issue of whether a new invention covered by an earlier assignment agreement is automatically assigned “by operation of law” “once the 

invention comes into being,” id., or whether a further act 

is required to effectuate the assignment. See, e.g., Bd. of 

Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 583 F.3d 832, 841 (Fed. Cir. 2009). This comes 

as no surprise, as a close inspection of the decision in 

DDB Technologies reveals it was never intended to create 

an exception so broad as to encompass agreements assigning existing patents, such as those at issue here. 

At issue in DDB Technologies was whether one of the 

named inventors of the patents in suit had assigned his 

interest in those patents to his employer by virtue of a 

clause in his employment agreement granting the employer rights to any invention arising out of the employment relationship. If such an assignment had occurred, 

Plaintiff DDB Technologies LLC (“DDB”) would have 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 8

lacked standing to maintain its suit without joining the 

employer as a co-owner of the asserted patents. In support of its claim that it was the sole owner of the patents, 

DDB argued that, “even if the patents in suit were within 

the scope of the [inventor’s] employment agreement,” the 

employer’s claim of ownership was barred by a number of 

defenses. DDB Techs., 517 F.3d at 1289. DDB did not 

dispute the district court’s determination that applicable 

state law precluded an assignor from asserting those 

defenses to rescind a valid assignment. Id. Rather, DDB 

argued that, because assignment under the employment 

agreement was not “automatic,” there was never a valid 

assignment and the defenses therefore remained available. Id. Consequently, the panel’s initial inquiry was 

whether the relevant language in the employment agreement constituted a promise to assign in the future or an 

assignment that became automatic upon the issuance of 

the patent creating the property right. 

In answering this question, the DDB Technologies

panel first acknowledged that “state law governs the 

interpretation of contracts generally.” Id. at 1290. 

Drawing on our analysis in Speedplay, Inc. v. Bebop, 211 

F.3d 1245, 1249 (Fed. Cir. 2000) and Arachnid, Inc. v. 

Merit Indus., Inc., 939 F.2d 1574 (Fed. Cir. 1991), however, the panel noted that, because “the question of 

whether a patent assignment clause creates an automatic 

assignment or merely an obligation to assign is intimately 

bound up with the question of standing in patent cases,” 

we “have accordingly treated it as a matter of federal 

law.” Id. Standing in isolation, this language may appear 

to encompass agreements beyond those assigning interests in future inventions. The remainder of the paragraph, however, clarifies that the exception applies only 

to agreements involving rights to future inventions: 
9 ABRAXIS BIOSCIENCE v. NAVINTA LLC

Applying federal law, we have held that whether 

an assignment of patent rights in an agreement 

such as the one in this case is automatic, requiring no further act on the part of the assignee, or 

merely a promise to assign depends on the contractual language. If the contract expressly grants 

rights in future inventions, “no further act [is] required once an invention [comes] into being,” and 

“the transfer of title [occurs] by operation of law.” 

FilmTec Corp., 939 F.2d 1568 at 1573 (contract 

provided that inventor “agrees to grant and does 

hereby grant” all rights in future inventions); see

also Speedplay, 211 F.3d at 1253 (contract provided that employee's inventions within the scope 

of the agreement “shall belong exclusively to [employer] and [employee] hereby conveys, transfers, 

and assigns to [employer] . . . all right, title and 

interest in and to Inventions”). Contracts that 

merely obligate the inventor to grant rights in the 

future, by contrast, “may vest the promisee with 

equitable rights in those inventions once made,” 

but do not by themselves “vest legal title to patents on the inventions in the promisee.” 

DDB Techs., 517 F.3d at 1289 (emphasis added). Thus, 

DDB Technologies did no more than recognize an exception to our precedent for assignments of rights in future 

inventions – an exception it felt was compelled by earlier 

case law discussing future inventions. It did not broaden 

that exception to include assignments of existing patents, 

however. Nor could it have. Had the decision purported 

to extend the exception to assignments of existing patents, any attempted extension would have been dicta

because that case did not involve an agreement assigning 

one or more existing patents. 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 10

Thus, no matter one’s view of the propriety of the judicial preemption exercised in DDB Technologies as to 

assignments of rights in future inventions,3 a separate 

preemption analysis was required to justify a new rule 

extending DDB Technologies to the much broader category of assignments of existing patents. See O'Melveny & 

Myers, 512 U.S. at 88 (“Not only the permissibility but 

also the scope of judicial displacement of state rules turns 

upon” the “significant conflict with some federal policy or 

interest.”). Had the panel undertaken the necessary 

preemption analysis, it would have no doubt understood 

that its decision to displace New York law could not stand 

in the face of governing Supreme Court precedent. 

 As discussed above, the majority’s creation of federal 

common law would have been proper only if the use of 

state law would have posed a “significant conflict” with an 

identifiable federal policy or interest. Despite precedent 

requiring that such a conflict be “specifically shown,” the 

panel majority did not so much as mention a conflict. See

Wallis, 384 U.S. at 68. Indeed, the closest it came to 

justifying its rule was when the majority quoted DDB 

Technologies for the proposition that, because “the ques-

 3 Many have questioned the wisdom of DDB Technologies, including whether the mere fact that a particular question of contract interpretation is “intimately 

bound up with the question of standing” is sufficient to 

justify judicial preemption of state law. See, e.g., Ian N. 

Feinberg, et al., Consequences of the Federal Circuit’s New 

Reliance on Federal Common Law to Interpret Patent 

Assignment Agreements, LANDSLIDE, Jan./Feb. 2011, at 

45. Though it may be that DDB Technologies should be 

reconsidered because it too displaces state law without 

seeming to identify a sufficiently significant conflict with 

federal interests as a precondition to doing so, I do not 

now address the wisdom of DDB Technologies, only the 

unwarranted extension of its principles to existing patent 

rights. 
11 ABRAXIS BIOSCIENCE v. NAVINTA LLC

tion of whether a patent assignment clause creates an 

automatic assignment or merely an obligation to assign is 

intimately bound up with the question of standing in 

patent cases,” we “have accordingly treated it as a matter 

of federal law.” While there is surely a relationship 

between property rights – and their ownership – and 

standing, that does not give rise to a significant conflict 

with federal patent policy. 

The fact that the result of both the ownership and 

standing inquiries may change based on which law is 

applied cannot possibly be enough to justify creation of a 

federal common law governing all patent assignments; if 

uniformity in the outcome of standing determinations 

were sufficient justification for preemption, “we would be 

awash in federal common-law rules.” See O'Melveny & 

Myers, 512 U.S. at 88. Just as standing turns on 

“whether a patent assignment clause creates an automatic assignment or merely an obligation to assign,” it 

also turns on the effect of a divorce decree on an exspouse’s co-ownership interest in a patent,4 whether a 

state court judgment transferring title in a patent may be 

nullified for fraud,5 and the effect of foreign intestacy law 

on a plaintiff’s ownership interest in a patent.6 Like most 

legal inquiries bearing on patent ownership, these questions are “intimately bound up with the question of stand-

 4 Enovsys, 614 F.3d at 1336 (holding that, based on 

the effect of a divorce decree under California law, a 

company had standing to bring suit without joining the 

founder’s ex-wife). 

5 MyMail, 476 F.3d at 1376 (holding that, as a matter 

of Texas law, the state court judgment could not be collaterally attacked). 

6 Akazawa v. Link New Tech. Int'l, Inc., 520 F.3d 

1354, 1358 (Fed. Cir. 2008) (remanding for a determination on the effect of Japanese intestacy law on the plaintiff’s standing to sue). 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 12

ing in patent cases.” Yet no one would seriously contend 

that this intimate bond justifies the creation of Federal 

Circuit common law pertaining to transfers of marital 

property, collateral challenges to state court judgments, 

or the impact of intestacy on patent ownership. The 

requirement that a significant conflict be specifically 

shown safeguards against this sort of proliferation of 

federal common law, and we should not have allowed the 

majority to skirt that restriction here to displace state 

contract law. See Aronson, 440 U.S. at 262. 

III. 

The concurrence appears to argue that this case did 

not involve the application of federal contract law, but 

was, rather, a simple case of Abraxis lacking a written 

assignment of the asserted patents when it filed suit, and 

the district court allowing the operation of state law to 

retroactively cure defective standing.7 Had the district 

court allowed that to occur, and the panel opinion was 

limited to that finding, I would not suggest that we revisit 

this case. But that is not what happened. To the contrary, before Abraxis filed suit, AZ-UK and its affiliates 

executed a series of agreements which, under the district 

court’s interpretation of New York law, effectuated a 

written assignment sufficient to satisfy the writing requirement and, accordingly, Article III standing. Only by: 

(1) confusing the law relating to the retroactive transfer of 

title with principles prohibiting retroactive conferral of 

standing; and (2) interpreting the parties’ agreements 

 7 See Concurring Op. at 2-3. (“In this case, Abraxis 

did not possess a written assignment of the patents-insuit from the owner thereof at the time suit was filed. . . . 

State law cannot retroactively override federal law to 

revive failed agreements, thereby conferring standing in 

federal court.”) 
13 ABRAXIS BIOSCIENCE v. NAVINTA LLC

under our doctrine pertaining to future inventions did the 

majority reach a different result. 

To assess standing, we must apply constitutional concepts to underlying facts. In patent cases, standing turns 

on ownership of the patent rights at issue. Speedplay, 

211 F.3d at 1249. Where the party filing suit purports to 

have obtained those property rights by assignment, we 

are to look to state law to assess the effect of that conveyance. See Cook Biotech, 460 F.3d at 1373. 35 U.S.C. § 261 

requires the fact of a writing, state law defines the legal 

effect of any such writing, and standing principles require 

that a valid written transfer occur as of the filing of a 

complaint in federal court. 

This case involved five separate writings, only one of 

which was executed after Abraxis filed suit. The first, 

executed in April of 2006, was a master Asset Purchase 

Agreement (“APA”), pursuant to which AZ-UK was to, “or 

was to cause one of its affiliates to,” transfer to Abraxis 

“all of the right, title and interest” of AZ-UK and its 

Affiliates in certain patents, including those eventually 

asserted by Abraxis. Abraxis Bioscience, Inc. v. Navinta 

LLC, No. 07-1251, 2009 U.S. Dist. LEXIS 26959, *3 

(D.N.J. Mar. 23, 2009). This transfer was to take place at, 

and as of, the “effective time,” which, by operation of the 

definition in the APA, was June 28, 2006. Id. at *3-4. As 

contemplated by the APA, the parties executed an IP 

Assignment Agreement (“IPAA”) on June 28, 2006, which 

provided that AZ-UK “hereby sells, assigns, conveys and 

transfers” to Abraxis all of AZ-UK’s “right, title and 

interest in and to,” the patents later asserted by Abraxis, 

among other IP rights. Id. at *4. Subsequently, in early 

2007, AZ-UK learned that title to the asserted patents 

remained with two of its affiliates, and had not been 

formally assigned to Abraxis. Consequently, on March, 

15, 2007, the affiliates executed additional documents 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 14

assigning these patents to AZ-UK. Then, in November of 

2007, several months after Abraxis filed suit, AZ-UK 

executed an additional document “confirming” that 

Abraxis has owned all “right, title, and interest” to the 

asserted patents “since no later than June 28, 2006.” Id. 

Interpreting the agreements under New York law, the 

district court found that they conferred ownership of the 

asserted patents to Abraxis as of March 15, 2007, when it 

filed suit. Specifically, because the affiliates’ March 15, 

2007 assignment documents were “delivered in accordance with” the terms of the APA, they were to be effective as of June 28, 2006. Given this retroactive effect, the 

documents vested title to the asserted patents in AZ-UK 

as of June 28, 2006, and the IPAA therefore operated “to 

transfer title from AZ-UK to Abraxis as of that date as 

well.” Abraxis, 2009 U.S. Dist. LEXIS 26959, at *13. 

Accordingly, all of the documents necessary to transfer 

title to Abraxis under New York law were actually – not 

retroactively – executed as of March 15, 2007, and 

Abraxis therefore had standing at the inception of its suit. 

The district court essentially found the November 2007 

agreement to be a belt-and-suspenders confirmation of 

what had already been accomplished under New York law 

and, thus, not relevant to the standing analysis. 

The panel majority, and now the concurrence, however, argued that AZ-UK’s assignment to Abraxis on June 

28, 2006 was insufficient to satisfy the writing requirement of 35 U.S.C. § 261 because “it is not possible to 

transfer an interest in a patent unless one owns the 

patents at the time of the transfer.” Concurring Op. at 2; 

Abraxis, 625 F.3d at 1365 (“AZ-UK had no legal title to 

assign, and therefore, lacked standing to commence this 

litigation.”). Accordingly, claimed the panel majority, 

“[e]ven if given retroactive effect, the March 15, 2007 

assignments d[id] not automatically assign the patents to 
15 ABRAXIS BIOSCIENCE v. NAVINTA LLC

Abraxis; a subsequent written agreement was necessary.” 

Abraxis, 625 F.3d at 1365. 

The first problem with this analysis is that it confuses 

ownership with standing. While it is true that the March 

15, 2007 assignments could not have retroactively conferred standing on AZ-UK had it filed suit on June 28, 

2006, that fact is irrelevant because AZ-UK did not attempt to sue on that date – it merely sought to transfer 

title to Abraxis by operation of the IPAA. The proper 

question was thus whether the March 15, 2007 documents 

could operate to retroactively vest title in AZ-UK as of 

June 28, 2006 such that the IPAA of the same date could 

operate to further transfer title, in writing, to Abraxis. As 

I noted earlier, both Supreme Court and our precedent 

require that we answer that question according to state 

law. Enovsys LLC, 614 F.3d at 1342 (“Who has legal title 

to a patent is a question of state law.”); see Aronson, 440 

U.S. at 262. Applying New York law, the district court 

answered that question affirmatively. Neither 35 U.S.C. 

§ 261, nor Article III, imposes additional requirements 

prohibiting the type of transaction that occurred here. 

The second – and more consequential – problem with 

the panel majority’s analysis is that it answered whether 

the writings at issue in this case were sufficient to transfer title by reference to federal common law principles of 

contract interpretation recognized in DDB Technologies

and other “promise to assign” cases.8 As I explained 

 8 The concurrence appears to disavow any reliance 

by the panel majority on our “promise to assign” cases, 

asserting that the panel majority’s decision rested on 35 

U.S.C § 261 and Article III standing principles. That the 

panel majority relied on those cases is evident from its 

response to the panel dissent’s argument that the “promise to assign” line of cases was irrelevant: “The dissent’s 

contention is erroneous. Because the APA is a promise by 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 16

earlier, however, those cases recognize a limited exception 

to the longstanding rule that state law governs the interpretation of assignment agreements only for assignments 

conferring interests in future inventions. Based on an 

extension of contract interpretation principles from those 

cases, the majority concluded that, even if the “March 15, 

2007 agreements were considered to be retroactive, title 

to the asserted patents did not automatically vest in 

Abraxis upon the March 15, 2007 transfer to AZ-UK 

because the June 28, 2006 IP Assignment Agreement did 

not result in an immediate transfer of ‘expectant interests’ to Abraxis.” Abraxis, 625 F.3d at 1359 (citing Roche, 

583 F.3d at 841-842). According to this theory, “a subsequent written assignment was necessary,” and that 

assignment did not occur until November 2007, almost 

eight months after Abraxis filed suit. Id. Nothing in New 

York law requires the type of “subsequent written assignment” the panel majority finds necessary. 

Only by injecting a requirement from our “promise to 

assign” cases to a transfer of existing patents did the 

majority conclude that Abraxis lacked standing when it 

filed suit. There can be no doubt, accordingly, that the 

precedent created by Abraxis is one which directs the 

preemption of state law in connection with the assignment of existing patents, a precedent that simply cannot 

be reconciled with governing law. 

 

AZ-UK to assign the relevant patents to Abraxis when 

AZ-UK obtains legal title, under our ‘promise to assign’ 

cases, a subsequent written agreement is necessary to 

consummate the assignment.” Abraxis, 625 F.3d at 1365 

(citing IpVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 

1324, 1327 (Fed. Cir. 2007)). 
17 ABRAXIS BIOSCIENCE v. NAVINTA LLC

IV. 

In addition to violating fundamental principles of preemption, the majority’s rule unreasonably, and unnecessarily, imposes burdens on parties seeking to transfer 

patents rights. Patent assignments, like the one in this 

case, occur in the context of large scale business transactions where the parties negotiate over, and depend upon, 

their choice of law provisions. These provisions allow 

parties to anticipate how a court would interpret their 

agreement and to draft agreements so that a court’s 

interpretation of it most likely will conform to the parties’ 

intentions. This is precisely what AZ-UK and Abraxis 

sought to do by including a New York choice of law provision in their agreements. The parties’ master agreement, 

moreover, contained an effective date provision, a tool 

widely used in IP transfer agreements, where the parties 

form an agreement in principle, subject to additional due 

diligence before finalizing the transfer of rights. It is 

undisputed that, under New York law, parties to a written transaction may use such provisions to retroactively 

make a contract effective as of an earlier date. Finding 

that the parties intended to give an earlier effective date 

to various agreements transferring the asserted patents, 

the district court found that the “relevant documents, 

taken as a whole, effectively transferred the rights in the 

patent to Abraxis” before it filed suit.9 Abraxis, 2009 U.S. 

Dist. LEXIS 26959, *13. Without any superseding policy 

justification, the panel majority ignored the state law 

chosen by the parties and made no effort to scrutinize the 

 9 Because the majority applied only federal law to 

the question of ownership, and it is with that decision 

that I take issue, I express no opinion as to whether 

reasonable minds could differ with the district court’s 

application of state law. 
ABRAXIS BIOSCIENCE v. NAVINTA LLC 18

parties’ intent or the effectiveness of the agreements 

under that law. 

By disregarding the express intent of the parties that 

New York law apply, the panel’s decision disrupts intellectual property transfers that rest on the expectation 

that the law jointly chosen by the parties will apply to 

both patent and non-patent assets.10 As a consequence, 

parties may lose standing to bring infringement actions 

with respect to patents that they indisputably own under 

state law. And, as a corollary, because standing is an 

issue that may be challenged at any time during the 

proceedings, adjudged infringers may escape liability 

based on the fortuity that, under the majority’s new rule, 

the relevant assignment agreements were insufficient to 

transfer title before suit, regardless of their sufficiency to 

do so under governing state law. 

V. 

Had the majority followed our precedent and concluded that, under New York law, the agreements were 

insufficient to confer standing as of the filing date, I 

would not suggest en banc consideration of this case. 

Indeed, had the majority applied the correct law but 

reached the wrong conclusion, I still would not suggest 

that we address the matter en banc. While such a decision would effectively waste three years of litigation on 

the merits, I do not believe the important and difficult en 

banc process should be invoked based only on differences 

 10 Absent an express act by Congress, state law applies to the transfer of all other types of property, including copyrights. See MELVILLE B. NIMMER & DAVID 

NIMMER, NIMMER ON COPYRIGHT § 10.08[A] (2010); Roger 

Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 

383, 392 (6th Cir. 2007) (applying Tennessee law to 

interpret the parties' copyright contracts). 
19 ABRAXIS BIOSCIENCE v. NAVINTA LLC

with a panel majority’s application of governing law to the 

facts. Because the majority, instead, decided this case by 

expanding the coverage of DDB Technologies’s exception 

for agreements assigning rights to future inventions to 

the exponentially larger class of agreements assigning 

existing patents, however, I do not believe we can ignore 

the profound impact of this decision. For these reasons, I 

must dissent from the court’s denial of Abraxis’s Petition 

for Rehearing En Banc in this matter.