‘A Brink of Invention’ Claim

Claims based on alleged breaches of invention assignment agreements rest fundamentally on state laws and, significantly, on state trial courts’ determinations of fact.

In Ikaria, Inc. v. Frederick J. Montgomery, No. 2015AP568, plaintiff-appellant Ikaria advances a ‘brink of invention’ theory that employees left Ikaria immediately before they were about to come upon an invention under the scope of Ikaria’s invention assignment clause with them. (Had they stayed, and completed their invention while under Ikaria’s employ, the rights to their invention would have resided with their employer.)

Brink of invention claims, naturally, rest on how much an employee had achieved prior to his or her departure. They’re fact-intensive. The argument as a claim makes sense, I think, because others may naturally wonder: why did employees leave when they did?

Here’s the employer’s claim, from the appellate opinion, paragraph 26:

What this leaves we will call Ikaria’s “brink-of-invention” argument. Ikaria argues that the defendants breached the implied duty of good faith by allegedly intentionally timing their resignations to occur when the defendants, as Ikaria puts it, were on “the brink of completing their inventions, so that they could evade a narrow reading of the Invention Assignment Clause.”

To advance successfully a claim like this, Ikaria would need two things under Wisconsin Law:

(1) to show that “the defendants not only conceived of all four inventions after the employee-defendants had resigned, but that these conceptions-of-invention were based on “substantial work” that the defendants “performed post-Ikaria”


(2) for the appellate court to disregard that “Ikaria effectively asks us to reweigh witness credibility and the evidence generally and override factual inferences drawn by the circuit court. However, as stated above, we are obligated to view the evidence in the light most favorable to the circuit court’s fact finding, including its credibility determinations, and there was a factual basis for the circuit court to reject the brink-of-invention notion.”

(Paragraphs 28, 29.)

In Ikaria, one sees that an appellate court may decline consideration of a factual determination about a ‘brink-of-invention’ departure by relying on a trial court’s prior factual assessment.

Appellate slip opinion, below:

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