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Beech Aircraft Corp. v. Edo Corp.

United States Court of Appeals for the Federal Circuit

April 22, 1993, Decided

92-1097, 92-1098, 92-1108, 92-1109

Opinion

 [***1574]   [*1239]  RICH, Circuit Judge. 

EDO Corporation (EDO) appeals and Beech Aircraft Corporation (BEECH) and Paul J. Jonas cross-appeal the November 1, 1991 decision of the U.S. District Court for the District of Kansas in this consolidated suit, Beech Aircraft Corp. v. EDO Corp., 777 F. Supp. 884 (D. Kan. 1991), on cross-motions for partial summary judgment. The district court issued its decision as two Judgments together with a consolidated Memorandum and Order. One Judgment is directed to a suit that BEECH/Jonas 2 originally filed in the U.S. District Court for the District of Columbia and later had transferred [**2]  to Kansas (SUIT-1), and the other Judgment is directed to a suit that BEECH/Jonas filed in Kansas (SUIT-2). The Kansas court consolidated these two suits after SUIT-1 was transferred from the D.C. court.

BEECH/Jonas appeal that part of the district court's decision denying their motion that EDO be ordered by summary judgment to assign to BEECH the following: (1) U.S. Patent No. 4,782,064 (ABILDSKOV-1); (2) the pending divisional application of the application which led to the ABILDSKOV-1 patent (ABILDSKOV-2); and (3) all other property or information in EDO's possession that is the property of BEECH pursuant to the decision rendered in EDO Corp. v. Beech Aircraft Corp., 715 F. Supp. 990 (D. Kan. 1988), aff'd, 911 F.2d 1447 (10th Cir. 1990), a "previous litigation" between EDO and BEECH. Although EDO logically does not appeal the district court's refusal to order [**3]  the requested assignment by summary judgment, EDO does appeal the district court's holding that BEECH is not precluded by res judicata, the compulsory counterclaim rule, or the applicable statute of limitations from asserting this assignment claim in the present suit.

EDO also appeals that part of the district court's decision vacating an interference decision rendered by the Board of Patent Appeals and Interferences (Board) of the U.S. Patent and Trademark Office (PTO) 3 on February 27, 1990. In that interference decision, the Board awarded priority to Abildskov for the common subject matter claimed in the ABILDSKOV-2 application, assigned to EDO, and U.S. Patent No. 4,671,470 (JONAS patent), assigned to BEECH.

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990 F.2d 1237 *; 1993 U.S. App. LEXIS 9033 **; 26 U.S.P.Q.2D (BNA) 1572 ***; 25 Fed. R. Serv. 3d (Callaghan) 1249

BEECH AIRCRAFT CORPORATION and PAUL J. JONAS, Plaintiffs/Cross-Appellants, v. EDO CORPORATION, Defendant/Appellant, and DOUGLAS B. COMER, Acting Commissioner of Patents and Trademarks, 1 Defendant.

Subsequent History: Petition for Rehearing Denied May 19, 1993, Reported at: 1993 U.S. App. LEXIS 11742.

Prior History:  [**1]  Appealed from: United States District Court of Kansas. Senior Judge Saffels

Disposition: AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

CORE TERMS

patent, district court, contracts, technology, subject matter, parties, invent, partial summary judgment, inventor, summary judgment motion, consolidated, assign, ownership rights, ownership, Aircraft, Counts, summary judgment, contractual, vacating, rights, trade secret, inventorship, requesting, appeals, motions, mature, wing, patent application, pertinent part, present suit

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, General Overview, Discovery, Methods of Discovery, Judgments, Motions for Summary Judgment, Partial Summary Judgment, Supporting Materials, Discovery Materials, Appeals, Standards of Review, Pleadings, Crossclaims, Counterclaims, Preliminary Considerations, Federal & State Interrelationships, Erie Doctrine, Business & Corporate Compliance, Contracts Law, Types of Contracts, Joint Contracts, Preclusion of Judgments, Res Judicata, Contracts Law, Breach, Breach of Contract Actions, Patent Law, US Patent & Trademark Office Proceedings, Filing Requirements, Ownership, Patents as Property, Trademark Law, Conveyances, Interference Proceedings, Invention Date & Priority, Patentability & Priority Determinations