Case: 19-2016 Document: 56 Page: 1 Filed: 07/28/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GREGORY C. JAMES,
Plaintiff-Appellant
v.
J2 CLOUD SERVICES, LLC, ADVANCED
MESSAGING TECHNOLOGIES, INC.,
Defendants-Appellees
______________________
2019-2016
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:16-cv-05769-CAS-
PJW, Senior Judge Christina A. Snyder.
______________________
Decided: July 28, 2020
______________________
OBI ILOPUTAIFE, Cotman IP Law Group, PLC, Pasa-
dena, CA, for plaintiff-appellant. Also represented by
DANIEL CHARLES COTMAN.
GUY RUTTENBERG, Ruttenberg IP Law, PC, Los Ange-
les, CA, for defendants-appellees. Also represented by
BASSIL GEORGE MADANAT.
______________________
Case: 19-2016 Document: 56 Page: 2 Filed: 07/28/2020
2 JAMES v. J2 CLOUD SERVICES, LLC
Before DYK, TARANTO, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
U.S. Patent No. 6,208,638 (“the ’638 patent”) is owned
by Advanced Messaging Technologies, Inc., licensed to J2
Cloud Services, LLC (collectively, “defendants”), and lists
Jaye Muller and Jack Rieley as the inventors. Appellant
Gregory C. James claims to be the sole inventor of the in-
ventions claimed in the ’638 patent. James sued the de-
fendants in the United States District Court for the Central
District of California, seeking correction of inventorship
under 35 U.S.C § 256 and asserting various state-law
claims based on his claimed inventorship. The district
court entered summary judgment in favor of the defend-
ants and against James. We affirm.
BACKGROUND
The ’638 patent is entitled “Method and Apparatus for
Transmission and Retrieval of Facsimile and Audio Mes-
sages Over a Circuit or Packet Switched Network.” J.A. 39.
The patent is directed to sending messages using telephone
and facsimile units connected to circuit switched networks
(such as telephone networks) through a communications
server connected to a packet switched network (such as in-
ternet networks) that uses internet protocols. The ’638 pa-
tent claims methods and systems that are directed to
receiving an incoming call signal and sending a digital rep-
resentation of the signal to final destinations using com-
munication servers. The patent discloses embodiments
where the communications server digitizes audio messages
received from a circuit switched network (e.g., voicemails)
and then sends the digitized messages as an email attach-
ment to the recipient. It appears that the claims also cover
converting and sending facsimile messages through
emails. A representative claim is method claim 13:
A method comprising:
Case: 19-2016 Document: 56 Page: 3 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 3
receiving a first incoming call signal des-
tined for a first communications server for
processing of an audio message into a digi-
tal representation;
determining if a first condition has oc-
curred;
redirecting the first incoming call signal
from the first communications server to a
second communications server based on
the determining of the first condition,
wherein the first incoming call signal in-
cludes a particular inbound address
uniquely associated with a user account
and at least one destination address on a
packet switched network, and wherein the
particular inbound address remains un-
changed during the redirecting;
extracting the particular inbound address;
determining, based on the particular in-
bound address, a user account status and
the at least one destination address on the
packet switched network; and,
sending the digital representation to the at
least one destination address, wherein the
particular inbound address is uniquely as-
signed to the user account and the at least
one destination address comprises at least
one email address.
J.A. 54 (alterations omitted). The named inventors are
Jaye Muller and Jack Rieley. James asserts that he is the
sole inventor of the inventions claimed in the ’638 patent
based on a system he developed for Muller and Rieley in
the mid-1990s.
Case: 19-2016 Document: 56 Page: 4 Filed: 07/28/2020
4 JAMES v. J2 CLOUD SERVICES, LLC
We state the facts in James’s favor as this appeal arises
from a grant of summary judgment. In 1994, Muller and
Rieley, the named inventors of the ’638 patent, came up
with the idea to receive voicemails and faxes through
email. In December 1995, they founded JFAX Communi-
cations, Inc. (“JFAX”) to commercialize this idea. Also in
late 1995, Muller and Rieley asked James, who was in Aus-
tralia, to develop a prototype that sent voicemails and faxes
(that were addressed by a telephone number) to an email
address.
After demonstrating a prototype, James traveled to the
United States to develop a commercial system for JFAX.
In February 1996, James, on behalf of GSP Software (a
partnership he “contemplated” with his friends), entered
into a Software Development Agreement with JFAX, where
GSP Software agreed to develop commercially viable “Fax
to E-Mail,” “E-Mail to Fax,” and “Voice-Mail to Email” sys-
tems. 1 After completing his work, James returned to
1 The Software Development Agreement refers to
the “Fax to E-Mail” system as
[a] commercially viable system for enabling faxes
to be received via advanced telecommunications
equipment located anywhere in the world and then
transmitted over the Internet to electronic mail ad-
dresses of JFAX customers[;]
the “E-Mail to Fax” system as
[a] commercially viable system for enabling faxes
to be sent by via JFAX using popular word proces-
sor, spreadsheet or graphics software programs.
The outgoing faxes will be sent via the Internet to
a JFAX Server and forwarded as fax messages to
any fax number in the world[; and]
the “Voice-Mail to Email” system as
Case: 19-2016 Document: 56 Page: 5 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 5
Australia in 1996 and was compensated by JFAX stock
that he later sold.
The patent application underlying the ’638 patent was
filed by JFAX on April 1, 1997. The patent issued on
March 27, 2001, listing Rieley and Muller as the inven-
tors. 2 The ’638 patent was eventually assigned to defend-
ant Advanced Messaging Technologies, Inc. and licensed to
defendant j2 Cloud Services, LLC. By 2016, JFAX changed
its name several times and ultimately became defendant j2
Cloud Services, LLC.
James asserts that the JFAX system is his invention.
James also claims that the JFAX system is the inventions
claimed in the ’638 patent and that Muller and Rieley
wrongfully secured a patent on that system.
On August 3, 2016, James (having learned of the
’638 patent) filed a complaint in the District Court for the
Central District of California against Advanced Messaging
Technologies, Inc. and j2 Cloud Services, Inc., 3 asserting
sole inventorship of claims of the ’638 patent and seeking
correction of inventorship under section 256. On motion,
[a] commercially viable system for enabling voice
mail messages to be received via advanced telecom-
munications equipment located anywhere in the
world and then transmitted over the Internet to
electronic mail addresses of JFAX customers.
J.A. 104–05.
2 On December 9, 2008, the United States Patent
and Trademark Office issued an ex parte reexamination
certificate for the ’638 patent that amended claims and
added new claims.
3 On September 27, 2016, James filed a first
amended complaint, adding defendant j2 Cloud Services,
LLC to the action.
Case: 19-2016 Document: 56 Page: 6 Filed: 07/28/2020
6 JAMES v. J2 CLOUD SERVICES, LLC
the district court dismissed the complaint for “lack[] [of]
standing to assert [an] inventorship claim” on the grounds
that James failed to sufficiently allege that “he ha[d] an
ownership or financial interest in the ’638 patent.”
J.A. 1511. On appeal, we reversed because there were fac-
tual disputes as to whether James had assigned his
claimed patent rights to the defendants. James v. j2 Cloud
Servs., LLC,
887 F.3d 1368, 1373–76 (Fed. Cir. 2018).
On remand, the parties stipulated to limited discovery
concerning James’s inventorship claim and issues involv-
ing the statute of limitations. On January 17, 2019, James
filed the operative (fourth) amended complaint, asserting
sole inventorship of the claims of the ’638 patent and alleg-
ing claims for fraudulent concealment, unjust enrichment,
and conversion. 4
On defendants’ motion, the district court granted sum-
mary judgment, holding that the “defendants [we]re enti-
tled to summary judgment on [James’s] claim for sole
inventorship of the [’]638 patent.” J.A. 11. The district
court found that the evidence that James relied on at most
showed only that “he developed a prototype of a system
that could convert a voicemail or fax to an email.” J.A. 8.
It held that there was no clear and convincing evidence
showing that James’s system practiced the patent claims
or that James “alone conceived of each element of the
40 claims of that patent.”
Id. There also was no “genuine
dispute as to whether Muller and Rieley at least shared in
4 James also asserted a claim for violation of Califor-
nia’s unfair competition law. The district court dismissed
this claim for failure to state a claim. James does not chal-
lenge this dismissal on appeal.
Case: 19-2016 Document: 56 Page: 7 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 7
the conception of some of the subject matter of the claimed
invention.” 5 J.A. 11.
As to the state-law claims, the district court held that
the three-year “statute of limitations on [James’s] state law
claims started to run in 2001 (at the latest) and that each
of [his] state law claims [we]re barred by the applicable
statute of limitations” because he had “possessed infor-
mation that put him on notice of his claims as early as 2001
. . . [but] was not diligent” in pursuing the claims. J.A. 21–
22.
James now appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1). We review grant of summary judg-
ment de novo.
DISCUSSION
I. Sole Inventorship Claim
James argues that the district court erred in granting
summary judgment against him on his inventorship claim.
“Determining ‘inventorship’ is nothing more than de-
termining who conceived the subject matter at issue[] . . . .”
Sewall v. Walters,
21 F.3d 411, 415 (Fed. Cir. 1994). “It is
settled that in establishing conception a party must show
possession of every feature recited in the count, and that
every limitation of the count must have been known to the
inventor at the time of the alleged conception.” Coleman v.
Dines,
754 F.2d 353, 359 (Fed. Cir. 1985). “[I]nventorship
is determined on a claim-by-claim basis.” Gemstar-TV
5 The district court also concluded that the inventor-
ship claim was barred by the doctrine of laches because
James “had enough information to place upon him a duty
of inquiry and thus a reasonable person in his position
should have known that the [’]639 Patent issued in 2001”
but delayed for 15 years in filing suit. J.A. 15. In light of
our disposition, we do not reach the issue of laches.
Case: 19-2016 Document: 56 Page: 8 Filed: 07/28/2020
8 JAMES v. J2 CLOUD SERVICES, LLC
Guide Int’l, Inc. v. Int’l Trade Comm’n,
383 F.3d 1352, 1381
(Fed. Cir. 2004). “The inventors as named in an issued pa-
tent are presumed to be correct.” Hess v. Advanced Cardi-
ovascular Sys., Inc.,
106 F.3d 976, 980 (Fed. Cir. 1997)
(quoting Amax Fly Ash Corp. v. United States,
514 F.2d
1041, 1047 (Ct. Cl. 1975)).
We conclude that the district court did not err in grant-
ing summary judgment against James on the inventorship
claim.
Here, the evidence that James points to does not sup-
port his claim that he conceived the inventions in the
’638 patent. James testified that (1) he believed he was the
“sole inventor of the technology claimed in the ’638 patent,”
J.A. 340, and (2) when he looked at the patent he realized
“that’s exactly what [he] invented,” J.A. 377. Such conclu-
sory and self-serving testimony is insufficient to survive a
motion for summary judgment. Sitrick v. Dreamworks,
LLC,
516 F.3d 993, 1001 (Fed. Cir. 2008) (“Conclusory . . .
assertions [of a witness] cannot raise triable issues of ma-
terial fact on summary judgment.”); Invitrogen Corp. v.
Clontech Labs., Inc.,
429 F.3d 1052, 1068 (Fed. Cir. 2005)
(holding that a witness’s conclusory assertion that the evi-
dence demonstrated “conception, diligence[,] and reduction
to practice” did not carry a party’s burden on summary
judgment); see also Tech. Dev. Corp. v. United States,
597
F.2d 733, 747 (Ct. Cl. 1979) (“The proof of conception and/or
reduction to practice is a heavy one for either party and
requires more than self-serving testimony or uncorrobo-
rated records and documents.”).
James also asserts that the fact that he was paid JFAX
stock gives rise to an inference that he delivered “the later-
patented JFAX system.” Appellant Br. 15. He also claims
that “JFAX’s allegedly-2001 press release” admits that his
prototype implemented the same functions of the “later-
claimed JFAX system” because the press release states
that the ’638 patent’s technology “allow[ed] both faxes and
Case: 19-2016 Document: 56 Page: 9 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 9
voice messages to be received without the end user needing
either a fax machine or a voice-mail system.”
Id. (quoting
J.A. 424). 6 We are unpersuaded by James’s arguments
that his evidence supports conception.
We conclude that James failed to provide evidence from
which a reasonable juror could conclude that he conceived
and “possess[ed] . . . every feature recited in the c[laims]”
of the ’638 patent. Davis v. Reddy,
620 F.2d 885, 889
(C.C.P.A. 1980). The district court properly granted sum-
mary judgment on James’s sole inventorship claim in favor
of the defendants.
II. State-Law Claims
The district court granted summary judgment against
James on his state-law claims for fraudulent concealment,
unjust enrichment, and conversion because they were
barred by the three-year statute of limitations. The basic
theory underlying these claims is that James developed the
system for JFAX in the mid-1990s, and that the defendants
wrongfully secured the ’638 patent based on “the inventive
systems and methods [he] created.” Appellant’s Reply
Br. 18. Although James’s allegations concern his work for
Muller and Rieley in the mid-1990s and the ’638 patent
that issued in 2001, James filed this action in 2016.
James does not dispute that his state-law claims were
subject to statute of limitations of at most three years
6 James also argues that “Muller admit[ted] [that]
James’s system and the ’638 patent are the same,” citing to
an excerpt of Muller’s deposition transcript. Appellant
Br. 14. However, that excerpt does not appear to have been
made part of the record before the district court. In any
case, the testimony James points to makes no statement
that the system he developed corresponded to all claims of
the ’638 patent.
Case: 19-2016 Document: 56 Page: 10 Filed: 07/28/2020
10 JAMES v. J2 CLOUD SERVICES, LLC
under California law. 7 Under California’s discovery rule,
the statute of limitations begins to run when a plaintiff sus-
pects or should suspect that his injury was caused by some-
one’s wrongdoing, i.e., when he has “notice or information
of circumstances to put a reasonable person on inquiry.”
Jolly v. Eli Lilly & Co.,
751 P.2d 923, 927–28 (Cal. 1988)
(emphasis omitted). The district court here held that the
state-law claims were barred by the applicable statute of
limitations because the evidence established only one legit-
imate inference that James “possessed information that
put him on notice of his claims as early as 2001 and that he
was not diligent.” J.A. 21.
James claims that the defendants wrongfully concealed
the filing of the application that lead to the ’638 patent de-
spite their duty to inform him of the application under this
court’s decision in University of Colorado Foundation, Inc.
v. American Cyanamid Co.,
196 F.3d 1366, 1373 (Fed. Cir.
1999) (holding that there was “an equitable duty to disclose
the patent application to the true inventors”). James also
alleges that the Software Development Agreement re-
quired the defendants to inform him if they no longer
treated the developed software as a secret and that the fil-
ing of the ’638 patent’s application without such a commu-
nication breached this duty. James contends that he had
no reason to have learned about the ’638 patent in 2001
when it issued because he left JFAX in late 1996 and sold
his JFAX shares by early 2000.
7 In California, fraudulent concealment and conver-
sion claims are subject to a three-year statute of limita-
tions. Platt Elec. Supply, Inc. v. EOFF Elec., Inc.,
522 F.3d
1049, 1054, 1060 (9th Cir. 2008); Daly v. Pearl Spirits, Inc.,
438 F. App’x 644, 645 (9th Cir. 2011). An unjust enrich-
ment claim is subject to a three-year statute of limitations
if it is based on fraud or mistake. Fed. Deposit Ins. Corp.
v. Dintino,
84 Cal. Rptr. 3d 38, 50 (Ct. App. 2008).
Case: 19-2016 Document: 56 Page: 11 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 11
We disagree. Even if the defendants breached their
duty to James by failing to advise him of the filing of the
’638 patent’s application, he would still have had notice of
the issuance of the ’638 patent in 2001. Although the ap-
plication was not public, by the time the patent issued,
James would have learned patent applications had been
filed by the defendants’ predecessors.
It is undisputed that James received documents con-
cerning JFAX’s IPO in June 1999. 8 He received the “Un-
derwriting Agreement,” which states that JFAX filed “a
registration statement on Form S-1” with the Securities
and Exchange Commission (“SEC”), J.A. 617, and that
“[JFAX] and its subsidiary own[ed] or ha[d] sufficient
rights to use all patents, patent rights . . . currently em-
ployed by them in connection with the business . . . oper-
ated by them[] . . . ,” J.A. 629. James in June 1999 also
received JFAX’s “Selling Stockholders’ Irrevocable Power
of Attorney” (“Power of Attorney”) and signed this docu-
ment acknowledging “receipt of a copy of the Amendment
No. 1 to the Registration Statement on Form S-1 . . . (the
‘Registration Statement’)” and his “review[] [of] the Regis-
tration Statement.” 9 J.A. 1339. The Registration
8 JFAX Communications, Inc. changed its name to
JFAX.COM, Inc. on April 15, 1999, prior to its IPO. We
refer to both names as “JFAX” in this opinion.
9 The Power of Attorney also states:
The undersigned [(i.e., James)] has no knowledge
of any material fact or condition that is not set forth
in the Registration Statement . . . .
The undersigned will furnish any and all infor-
mation which [JFAX] . . . deems necessary or desir-
able in connection with the preparation and filing
of all amendments, post-effective amendments and
supplements to the Registration Statement[] . . . .
Case: 19-2016 Document: 56 Page: 12 Filed: 07/28/2020
12 JAMES v. J2 CLOUD SERVICES, LLC
Statement, filed with the SEC on May 26, 1999, makes
clear that “[JFAX had] multiple pending U.S. patent appli-
cations . . . for proprietary aspects of the major components
of [its] technology, but [JFAX had] no issued patents.”
J.A. 1335.
A reasonable person who received the Underwriting
Agreement and Power of Attorney would have reviewed the
Registration Statement and thus should have known that
JFAX had pending patent applications covering “proprie-
tary aspects of the major components of [its] technology”
that James alleges to have developed. J.A. 1335. James
also testified that he went to JFAX’s website “to see what
they’re doing” after he completed his work, J.A. 373, and
that he was familiar with searching patents. James was
on notice that the defendants had a patent application that
likely would issue and a reasonable person would have con-
ducted a search for the issued patent.
In any case, the ’638 patent issued on March 27, 2001,
and on May 17, 2001, j2 Global Communications, Inc. 10 is-
sued a press release, announcing the issuance of the
’638 patent with Muller and Rieley as the inventors and
stating that the patent’s technology “allow[ed] both faxes
and voice messages to be received without the end user
needing either a fax machine or a voice-mail system.”
J.A. 424. Indeed, James testified that he was “aware that
j2 had patents” “all along.” 11 J.A. 1029. Given these un-
disputed facts, the district court did not err in concluding
that a reasonable person in James’s position would have
J.A. 1342.
10 j2 Global Communications, Inc. is one of the previ-
ous names used by defendant j2 Cloud Services, LLC.
11 James contends that he knew “j2” rather than
“JFAX” had patents. Appellant’s Reply Br. 2. However,
there is no factual dispute that the later “j2” entities
changed their corporate name from JFAX.
Case: 19-2016 Document: 56 Page: 13 Filed: 07/28/2020
JAMES v. J2 CLOUD SERVICES, LLC 13
known that JFAX and its successors had secured the
’638 patent in 2001 and the nature of that patent.
We conclude that James had sufficient “notice or infor-
mation of circumstances to put a reasonable person on in-
quiry” regarding his state-law claims concerning the
’638 patent by 2001.
Jolly, 751 P.2d at 927–28. Here, “the
uncontradicted facts . . . are susceptible of only one legiti-
mate inference, [and thus] summary judgment [wa]s
proper.”
Id. at 928–29.
CONCLUSION
We affirm the district court’s grant of summary judg-
ment against James on his sole inventorship claim and
state-law claims.
AFFIRMED
