Appeal from the United States District Court for the Northern District of Texas in No. 11-CV-2408, Judge Jorge A. Solis.
BEVERLY A. WHITLEY, Bell Nunnally & Martin, LLP, of Dallas, Texas, argued for plaintiff-appellee. With her on the brief were CHRISTOPHER B. TROWBRIDGE, R. HEATH CHEEK, and ROSS A. WILLIAMS.
JAMES ROBERT ARNETT, II, of Carter Stafford Arnett Hamada & Mockler, PLLC, of Dallas, Texas, argued for defendants-appellants. With him on the brief were EDGAR LEON CARTER and SEAN T. HAMADA.
Before RADER, Chief Judge, MOORE and REYNA, Circuit Judges.
Rader, Chief Judge .
On February 19 and March 20, 2013, the district court issued orders purporting to clarify a preliminary injunction and enjoining David Gillman, and two entities named Talon Technologies, Inc. (collectively Appellants)
from using various materials and processes first developed by plaintiff StoneEagle Services, Inc. (StoneEagle). Because the district court lacked jurisdiction over this case when StoneEagle initiated this lawsuit, this court vacates the proceedings below, including the preliminary injunction, and remands with instructions to dismiss the case.
In 2006, Robert Allen and Gillman teamed up to adapt Allen's electronic payment system, then used in the automotive industry, to process health care claims. As part of their collaboration, they entered into a number of agreements governing confidentiality and the parties' relationship. The agreements provided, in part, that Allen's company, StoneEagle, owned the technology in the new health care payment system. See J.A. 96-115. As part of the collaboration, StoneEagle also licensed the technology to Appellants, who were responsible for marketing the new health care payment system to potential customers.
Allen also filed a patent application on the health care payment system. The application listed Allen as the sole inventor. The parties, while disputing the extent of his involvement, do not dispute that Gillman had some role in drafting the patent application. Id. at 68, 73. The parties also agree that Gillman assisted Allen with the patent application process. Id. StoneEagle asserts that, in the course of Gillman's involvement with the application, Gillman never objected to Allen's status as the sole inventor. Id. at 73.
Although not listed as an inventor, Gillman enjoyed an ownership interest in the patent application until at least July 2010. Id. at 74. On July 15, 2010, Gillman appears to have assigned his interest to StoneEagle. Id. at 74. The patent application issued as U.S. Patent No. 7,792,686 ('686 patent) a couple months later in September 2010.
By 2011, Allen and Gillman's collaborative relationship had soured. A meeting that occurred on or around August 31, 2011, appears to have precipitated this deterioration. Both Allen and Gillman attended the meeting; Allen as a representative from StoneEagle and Gillman as a representative of the license holder in the '686 patent. Id. at 80. They met with potential investors interested in the health care payment system. According to StoneEagle, the meeting showed that the potential investors considered the '686 patent very valuable. StoneEagle alleges that Gillman became upset upon hearing that the investors attributed so much value to the patent. At that point, according to StoneEagle's allegations, Gillman " suddenly and falsely claimed that it is his patent, that he ...