LOS ANGELES – A man failed to prove he was the sole inventor of a voicemail and fax feature patent, causing the U.S. District Court for the Central District of California to grant summary judgment against the companies he was suing on May 29.
Judge Christina A. Snyder granted defendants j2 Cloud Services Inc. and Advanced Messaging Technologies Inc.'s motion to dismiss the suit. The defendants alleged that plaintiff Gregory C. James failed to substantiate his sole inventorship claims and that they are time-barred.
James filed an instant action against the defendants on Aug. 3, 2016. He accused JFAX Communications Inc., which is the defendants’ predecessor-in-interest, of patenting inventions that James himself created and failing to give him proper attribution as the only inventor. The inventions in question are the Fax-to-Email and Voicemail-to-Email systems.
James later added j2 Cloud Services to his lawsuit as a defendant. He sued seeking correction of inventorship and allegations of unjust enrichment, common law conversion and unfair competition under California Business and Professions Code (UCL). After much litigation, on Jan. 25, James dismissed j2 Global from the lawsuit, and filed what is now his fourth amended complaint three days later. While the remaining defendants asked the court to dismiss the state law claims in the fourth amended complaint, the court only dismissed the UCL complaint but kept the claims for fraudulent concealment, unjust enrichment and conversion. The defendants then filed the current motion for summary judgment on all of the remaining claims.
Snyder first denied James’ request to be named as the sole inventor after he failed to prove that he actually was the only inventor of the patent. The judge pointed out that anyone who has even the smallest contribution to the feature could be named as a co-creator. In this case, plaintiff confessed that two men contributed to some of the patent, including how to determine the type of messaging for the audio. While James alleged that their contributions were merely “a description of the state of the art, whose sole basis for inclusion [in the patent] was [plaintiff] himself,” according to the ruling, the plaintiff failed to prove what was considered state of the art at the time.
On top of that, the judge said the inventorship argument was barred under the doctrine of laches. Snyder said that a registration statement “would have caused a reasonable person to make further inquiries about whether JFAX was, in fact, pursuing a patent on the technology that plaintiff alleges to have developed.”
The statute of limitations also barred the plaintiff’s fraudulent concealment and conversion claims, which are both under a three-year statute of limitations. As for unjust enrichment, that statute of limitations is only two years. The ruling notes James’ claims are founded on the work done to develop the features in 1996 and the defendants’ application in 1997 for a patent that didn’t include James’ name. James didn’t discover his claims until 2013.