Beng-Yu Woo, Xiaoming Li, and Vivian Hsiun created and patented an invention titled “Full Duplex Single Chip Video Codec.” At the time, Woo, Li, and Hsiun were employees of Infochips Systems, Inc. Through a series of buyouts and transfers, Infochips and its assets came to be owned by AVC Technology, Inc. In 1995, Woo and Li assigned their ownership interests in the invention to AVC. Hsuin, however, refused to assign her interests. AVC was later purchased and dissolved by Advanced Video Technologies LLC, the plaintiff in this case.

In 2011, Advanced Video filed a patent infringement suit against HTC Corporation regarding its alleged use of the invention. That case was dismissed for lack of standing; the court reasoned that because Hsuin did not assign away her interests in the invention, Advanced Video did not have an ownership interest in the patent. In its appeal, Advanced Video pointed to the 1992 employment agreement between Infochips and Hsuin. The agreement stated, in relevant part:

I [Hsuin] 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.

Advanced Video argues that the “will assign” language of the employment agreement means that Hsuin assigned her rights to the invention to Infochips, and that Advanced Video is the rightful owner of the patent following the series of transfers. What do you think of Advanced Video’s argument? Is “will assign” the same thing as “assign”? How do you think the appellate court ruled?