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Tri-Star Electronics International, Inc. v. Preci-Dip Duratal SA

Citation: 345 F. App'x 565Docket: Misc. No. 902

Court: Court of Appeals for the Federal Circuit; May 5, 2009; Federal Appellate Court

Narrative Opinion Summary

The case involves a petition by Preci-Dip Durtal SA seeking permission to appeal an order from the United States District Court for the Central District of California. The order in question involved complex legal issues with substantial grounds for differing opinions, potentially expediting the litigation's resolution. The dispute arose from Tri-Star Electronics International, Inc.'s corporate restructuring and subsequent patent infringement lawsuit against Preci-Dip concerning U.S. Patent No. 6,250,974. Tri-Star's corporate history includes a merger from Ohio to California and later re-incorporation in Delaware, which allegedly transferred patent rights to the new entity. Preci-Dip moved to dismiss the lawsuit, arguing the lack of standing due to the patent rights being assigned to the defunct Tri-Star, Ohio. The district court denied the motion, affirming the validity of the original patent assignment and suggesting potential reformation of the assignment under equitable principles. The court certified the order for permissive appeal, and the appellate court granted Preci-Dip's petition under 28 U.S.C. § 1292(d)(2), allowing the appeal to proceed based on the significant legal questions presented. This ruling facilitates further examination of the transfer and standing issues in the context of corporate restructuring and patent rights.

Legal Issues Addressed

Equitable Doctrine of Reformation

Application: The court considered the possibility of reforming the patent assignment under the equitable doctrine to reflect the parties' intentions, even if the rights did not automatically transfer to Tri-Star, California.

Reasoning: The court suggested that even if Tri-Star, California did not inherit the patent rights automatically, the assignment could be reformed under the equitable doctrine to reflect the parties' intentions.

Merger and Continuation of Corporate Rights

Application: The court applied Ohio law to determine that Tri-Star, Ohio continued to exist for the purpose of transferring rights despite the merger into the California corporation.

Reasoning: The court cited Ohio law indicating that Tri-Star, Ohio continued to exist for the purpose of transferring rights despite the merger.

Permissive Appeal under 28 U.S.C. § 1292(d)(2)

Application: The appellate court determined that the circumstances justified granting the petition for permission to appeal, exercising its discretion under the statute.

Reasoning: The appellate court has discretion to grant such appeals under 28 U.S.C. § 1292(d)(2). It has determined that the circumstances justify granting the petition for permission to appeal.