     In the United States Court of Federal Claims
                                 No. 11-268C
                            (Filed: May 18, 2018)

*******************************
SECURITYPOINT HOLDINGS, INC.,
                                           Patents; Standing; Ownership;
                                           Assignment; Motion to Dismiss;
              Plaintiff,                   Collateral Estoppel; Judicial
                                           Estoppel.
v.

THE UNITED STATES,

           Defendant.
*******************************

      Bradley C. Graveline and Manish K. Mehta, Chicago, IL, with whom
was Laura M. Burson, Los Angeles, CA, for plaintiff.

       Gary Hausken, Director, United States Department of Justice, Civil
Division, Commercial Litigation Branch, Washington, DC, with whom were
Chad Readler, Acting Assistant Attorney General, and Alice S. Jou and Lee
Perla, for defendant.

                                  OPINION

BRUGGINK, Judge.

        This is a patent infringement action brought pursuant to 28 U.S.C. §
1498 (2012). Plaintiff, SecurityPoint Holdings, Inc. (“SecurityPoint”), alleges
that the Transportation Security Administration (“TSA”) has infringed claims
1-4, 6-9, and 12-15. of U.S. Patent No. 6,888,460 (“460 patent”) by employing
similar or identical means and method for recycling trays and carts at airport
security screening checkpoints. The 460 patent teaches a system of recycling
trays through security screening checkpoints by use of movable carts and also
teaches the display of advertising and identification tags on the trays. The
patent’s priority date is July 3, 2002, which is when the inventor, Mr. Joseph
Ambrefe, first filed a provisional patent application at the Patent and
Trademark Office (“PTO”). The 460 patent was issued on May 3, 2005.
Defendant has stipulated to infringement at various airports around the
country, and we held in 2016 that the patent was valid. SecurityPoint
Holdings, Inc., v. United States, 129 Fed. Cl. 25 (2016).

        Seven years after the suit was initiated, defendant now brings a motion
to dismiss for lack of standing. It asserts that the assignment of the patent
application from the inventor, Mr. Ambrefe, to plaintiff’s predecessor-in-
interest, SecurityPoint Media, Inc., was either ineffective and void or
succeeded in transferring ownership to a non-party. In addition, and in the
alternative, it contends, without dispute from plaintiff, that a different entity
has been licensing the 460 methodology and indeed has asserted the patent in
litigation against other entities. It thus argues that plaintiff has no standing to
sue or should be estopped from claiming rights to the patent in this suit. Oral
argument was held on May 1, 2018, after which we permitted certain materials
to be submitted by both parties to be added to the record.

        We are sympathetic with the government’s motion. Over time, Joseph
Ambrefe has created a virtual mare’s nest of entities of similar name, all
connected to his patented screening methodology. The actions of these entities
and of Mr. Ambrefe himself, often through counsel, certainly raise questions
as to the owner of the patent-in-suit. To deny the motion to dismiss on either
standing or estoppel grounds requires the court to ignore the prodigious
proliferation of entities and accept the argument that the current state of
confusion is result of a cascading series of innocent mistakes. Nevertheless,
that is where we arrive, for the reasons we explain below.

                               BACKGROUND

        During the pendency of the patent application, the inventor, Mr.
Ambrefe, executed an assignment to Security Point Media, Inc., asserted to be
a Pennsylvania company doing business at 847 West Miner Street, West
Chester, PA 19382. As best the parties have been able to determine, there was
not then and there never has been a corporation by that name at any address.
In an affidavit submitted to oppose the motion, Mr. Ambrefe tells the court
that, instead, there was a limited liability corporation in Pennsylvania by the
name of SecurityPoint Media, LLC, doing business at 874 West Miner Street,
West Chester, PA 19832. The principal of the latter entity was Mr. Ambrefe.
It was Mr. Ambrefe’s intention to make the assignment to the LLC. The
mistake was apparently that of his lawyer, Mr. Don J. Pelto. The mistaken
assignment was recorded at the Patent Office.


                                        2
       The current plaintiff, SecurityPoint Holdings, Inc., is the successor-in-
interest to SecurityPoint Media, LLC, i.e., not to the nominal assignee. In
addition, it turns out that a different entity, Security Point Media, LLC
(Florida) (hereafter, “New Media”), has been entering into assignments and
leases of the 460 methodology and indeed has been involved in litigation
against other entities in which it has asserted ownership of the patent. Plaintiff
concedes that New Media does not own the patent.1

       One can either attempt to trace the lineage of the patent or attempt to
reverse engineer the plaintiff. According to the government, neither exercise
helps the plaintiff. The first can be very brief: Mr. Ambrefe assigned the
patent to Security Point Media, Inc., which either never existed or did not, in
any event, assign the patent to any other entity. Security Point Media, Inc. is
not the plaintiff, hence, end of story.

        The second approach begins with plaintiff, Security Point Holdings,
Inc., and scrolls back through a series of assignments or name changes, none
of which end at the nominal assignee. On October 28, 2011, Security Point
Holdings, Inc. became the successor-in-name to Security Point Holdings, LLC
after the company reorganized in Delaware. Before that, on January 16, 2007,
Security Point Holdings, LLC had became the successor-in-name to
SecurityPoint Media, LLC (Florida). Before that, on June 1, 2006,
SecurityPoint Media, LLC (Pennsylvania) had moved its incorporation and
become SecurityPoint Media, LLC (Florida). SecurityPoint Media, LLC was
initially incorporated in Pennsylvania on June 7, 2002.

        Plaintiff responds that it was to this last entity that Mr. Ambrefe
intended to make the November 28, 2003 assignment. Plaintiff asserts that the
initial mistake was a scrivener’s error in three respects. There should not have
been a space between “Security” and “Point;” the abbreviation for the
corporate form “Inc.” should have been “LLC;” and the address number
should be transposed from “847” to “874.” In short, it pleads sloppiness rather
than ill intent. Plaintiff points out that, on September 29, 2011, a “Corrective
Worldwide Assignment” was executed from Mr. Ambrefe to SecurityPoint
Media, LLC, the then plaintiff in this suit. It concedes that, even if the
corrective assignment were effective, it would not help plaintiff avoid the


1
 Although, at oral argument, counsel offered, without direct proof, that it was
an implied licensee.

                                        3
motion to dismiss, as this action had been commenced prior to the corrective
assignment.

        Defendant replies by pointing out that the scriveners error, if that’s what
it was, was repeated at least five times. On March 4, 2005, Mr. Pelto paid the
issue and publication fees for the 460 patent in the name of Security Point
Media, Inc. and the patent was issued in that name on May 2, 2005. Filings
also were made at the Patent Office in the name of this same entity on at least
four occasions with respect to other patents invented by Mr. Ambrefe. In
defendant’s view, the court should view these actions as confirming Mr.
Ambrefe’s original intent to convey the patent to the Pennsylvania corporation
that bears no relation to the current plaintiff.

        In addition to these assignments or name changes, on January 17, 2007,
Mr. Ambrefe created New Media as a Florida LLC, along with two other
subsidiaries, SPM Productions, LLC, and SPM Operations, LLC. The day
before, on January 16, a lawsuit had been initiated in federal district court in
Florida in the name of SecurityPoint Media against the Adason Group, LLC.
in the Middle District of Florida. That suit was withdrawn and re-filed in the
same name in March 2007. In that suit, New Media alleged ownership of the
patent in suit and infringement of that patent by Adason. Plaintiff concedes
that both filings contained a mistaken representation, in that New Media did
not own the patent. This mistake has been repeated on several subsequent
occasions in that New Media repeatedly has been executing licenses based on
the asserted ownership of the ‘460 methodology. Plaintiff suggested at oral
argument, without evidence, that these actions may have been taken pursuant
to an implied license. Mr. Ambrefe explained in a supplemental declaration
that New Media existed and exists now only as the operating arm of
SecurityPoint Holdings, and, given his control of both entities, he did not and
does not distinguish between them. This accounts for New Media’s
identification in the Adason action as the patent holder, according to Mr.
Ambrefe’s second declaration.

                                 DISCUSSION

A. The Motion to Dismiss for Lack of Standing

       Defendant does not have to show that it was prejudiced by a mistake.
Plaintiff bears the burden of establishing jurisdiction. Here, defendant can
point to a nominal assignment to an entity apparently not a predecessor-in-

                                        4
interest to plaintiff. Plaintiff thus must prove that it was assigned the patent-
in-suit. SecurityPoint Media, Inc. only steps into the line of succession if the
court deems the original assignment to have been to SecurityPoint Media,
LLC.

        The parties agree that Pennsylvania law controls the interpretation and
correction of patent assignments. See MyMail, Ltd. v. Am. Online, Inc., 476
F.3d 1372, 1375 (Fed. Cir. 2007). And both parties agree that, in
Pennsylvania, assignments are interpreted as contracts. Defendant contends
that plaintiff therefore must first go to a Pennsylvania state court, or a federal
district court acting under diversity jurisdiction, to correct the assignment. We
disagree. There is no question that the court has subject matter jurisdiction
under 28 U.S.C. § 1498. That distinguishes the present circumstances from
Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1571 (Fed. Cir.
1997), on which defendant relies. That action was commenced in Texas state
court by an asserted patent holder against an assignee. The action was
removed to district court, and on appeal, the question before the Federal
Circuit was whether the action could have been initiated in the first instance
under patent laws in district court. The circuit concluded that it could not
because it did not “arise under the patent laws.” Id. at 1579. The action was
fundamentally one in contract, but plaintiff could not make the assertion that
it owned the patent without first having a Texas state court declare the
assignment to the defendant void. Id. at 1574. The court drew the distinction
between an assignment which had built within it a rescission clause and one
which did not. The assignment in the case in suit did not have such a provision
and the plaintiff had no colorable title because it could not simply unilaterally
declare the assignment void. Id. at 1577.

       We view the present circumstances in a different light. The Jim Arnold
court distinguished the result there from a decision by the court in Air Products
& Chemicals, Inc. v. Reichhold Chemicals, Inc., 755 F.2d 1559 (Fed. Cir.
1985) (citing Luckett v. Delpark, Inc., 270 U.S. 496 (1926)). where the court
taught that

              A district court, however, is not precluded in patent suits
       from resolving non-patent questions, and the fact that a question
       of contract law must be decided prior to reaching the
       infringement question does not defeat federal subject matter
       jurisdiction. That resolution of a question of state law may
       render federal questions moot does not deprive a federal court

                                        5
       of subject matter jurisdiction where the plaintiff bases his claim
       upon, and seeks remedies under, the patent laws, even where the
       complaint anticipates a defense of license.

Id. at 1563–64 (citing Luckett, 270 U.S. at 510). We view the controlling
principle to be that, if the trial court is presented with a colorable claim of
patent ownership, and the suit is fundamentally one for damages under patent
laws, the court may deal with the contract question.

        We view the present circumstance as within the intent of Air Prod. &
Chemicals, Inc. There is no assertion by the United States that it has rights
under an assignment. Plaintiff did not anticipate at the time it filed suit that
title would be challenged; indeed it took seven years for the issue to surface.
The entire complaint is one for infringement under the patent laws. We
therefore conclude that the issue of assignment validity is properly before the
court, albeit controlled by state law.

        At the outset, we decline to strike the Ambrefe affidavit, as defendant
suggests. Mr. Ambrefe plainly is interested in the outcome, but given his
central role in these activities, it is hardly fair to treat his explanation as tainted
to the point that it should be ignored.2 This leaves us, at least as to the initial
assignment, with a plausible explanation of what happened. The names are
similar and the mistake appears to be the result of carelessness, not an intent
to deceive.

       We thus have parol evidence of a mistake. Defendant urges us to


2
 Plaintiff also submitted a declaration by plaintiff’s co-founder Doug Linehan.
He was then the Vice President of SecurityPoint Media, LLC. In it, he avers
much the same as Mr. Ambrefe did in his: that any and all uses of the term
“Security Point Media, Inc.” were clerical errors, including in the initial
assignment of the patent from Mr. Ambrefe. He also states that neither he nor
Mr. Ambrefe ever incorporated an entity by that name in any state or other
country. After oral argument, we allowed both parties to submit supplemental
factual materials to complete the record on the issue of standing. Plaintiff also
submitted the declaration of Jennifer Blake, who is employed by Telos Legal
Corporation, a corporate services firm. Ms. Blake represents that she
conducted a business record search in all 50 states and the District of
Columbia and did not find any entity named “Security Point Media, Inc.”

                                          6
ignore this fact, asserting that the court cannot act unless there is a patent
ambiguity in the assignment. There is no apparent ambiguity in the
abbreviation “Inc.” We are not asked to construe it to mean “LLC.” The two
types of entities are different. The ambiguity in the name as a whole is, in that
sense, latent, and does not arise without consideration of parol evidence.
Pennsylvania, however, permits the creation of a latent ambiguity by parol
evidence under limited circumstances:

       a contract that is unambiguous on its face must be interpreted
       according to the natural meaning of its terms, unless the contract
       contains a latent ambiguity, whereupon extrinsic evidence may
       be admitted to establish the correct interpretation. However, a
       claim of latent ambiguity must be based on a “contractual
       hook”: the proffered extrinsic evidence must support an
       alternative meaning of a specific term or terms contained in the
       contract, rather than simply support a general claim that the
       parties meant something other than what the contract says on its
       face. In other words, the ambiguity inquiry must be about the
       parties' “linguistic reference” rather than about their
       expectations.

Bohler-Uddeholm America, Inc. v. Ellwood Group, 247 F.3d 79, 96 (3d Cir.
2001) (applying Pennsylvania law); see also Koplin v. Franklin Fire Ins. Co.
of Philadelphia, 44 A.2d 877, 879 (Pa. Super. Ct. 1945) (parol evidence
allowed where an instrument of writing contains a reference to a particular
person but it is shown by extrinsic evidence that there are two or more persons
to whom the description in the instrument might properly apply).

       Pennsylvania also follows the rule of “idem sonans,” which one of its
courts explained as follows:

       The general rule of idem sonans has been accurately and clearly
       stated to be “that absolute accuracy in spelling names is not
       required in legal documents or proceedings, either civil or
       criminal; that if the name as spelled in the document though
       different from the correct spelling thereof, conveys to the ear
       when pronounced according to commonly accepted methods, a
       sound practically identical with the sound of the correct name as
       commonly pronounced, the name as thus given is a sufficient
       designation of the individual referred to, and no advantage can

                                       7
       be taken of the clerical error:”

Delaney v. Becker, 14 Pa. Super. 392, 397 (1900). The question there was
whether creditors of defendant Becker should have been on notice of a
judgment against a man named “Baker.” The court held that the creditors were
not diligent in protecting themselves. They should have searched for similar
sounding judgments.

        There was a different result in Mercer v. Santa Lucia of Hillsville, 82
Pa. D. & C. 233 (Pa. Com. Pl. 1953). The question there involved competing
liens to entities with similar sounding names. One was Societa Devoti di Santa
Lucia of Hillsville, PA. At the time there was no such entity. The other was
against Society San Lucia of Hillsville:

       In the light of these principles can it be said that any title passed
       to Societa Devoti di Santa Lucia of Hillsville, Pa., by the deed
       of New Castle Lime and Stone Company? Here it is argued that
       a similarity of names and the effect of translating from the
       Italian to the English operates in favor of those who claim under
       the Societa Devoti di Santa Lucia. But the discrepancy here
       seems too great. The names do not sound alike; the principle of
       idem sonans does not help: Delaney v. Becker, 14 Pa. Superior
       Ct. 392, 397. The fictitious name contains two more words than
       the real name. There must be fundamental similarity of names;
       this is lacking here.

Id. at 241.

       In McCarthy Bros. & Wilson v. Schmitt, 6 Pa. D. & C. 147 (Com. Pl.
1925), the court corrected an option: “The only issue in the case arises from
the fact that, in the exercise of the option given to the plaintiff in the lease of
July 10, 1922, the plaintiff, instead of referring to itself as ‘McCarthy Bros. &
Wilson, Inc.,’ designated itself as ‘McCarthy Bros., Inc.’” Id. at 147.

       It is inconceivable that the failure of the plaintiff to use the
       words “& Wilson” as a part of its corporate title should be held
       to deprive it of the important substantive rights which it seeks to
       exercise.
       ....
       As stated in Bower v. State Bank, 5 Ark. 234: “It has long since

                                          8
       been determined that acts done by, or to, a corporation by a
       name substantially its true name, though differing therefrom in
       words and syllables, are valid, and upon this principle many
       cases have been decided,” calling attention to the case of Lynne
       Regis, 10 Coke, 122b, 77 Reprint, 1111.
       . . . . a departure from the strict style of the corporation will not
       avoid its contract if it substantially appear that the particular
       corporation was intended; and that a latent ambiguity may,
       under proper averments, be explained by parol evidence . . . .

Id. at 147-48 (citing Berks and Dauphin Turnpike Rd. v. Myers, 6 S & R 12
(1820)). The law has in Pennsylvania has long been that misnomer of
corporate title does not render a contract void as a matter of law. Berks and
Dauphin Turnpike Rd., 6 S & R at 17.

         Although it involves California law, we think Pennsylvania allows us
to resolve the present case in the same way that the district court addressed a
similar problem in Shower Enclosures America, Inc. v. BBC Distribution
Corp., No. 3:15CV627, 2016 WL 3031081 (N.D. Ind. May 27, 2016)
(applying California law). There, the district court held that it could take into
account parol evidence to identify a name problem. The patent assignee in that
case was “Shower Enclosures, Inc.” The actual name of the company was
“Shower Enclosures America, Inc.” The court held that mere typographical
errors in assignments will not negate standing where the intent of the parties
is clear. Id. at 2. To similar effect are Sw. eFuel Network, L.L.C. v.
Transaction Tracking Techs., Inc., 2009 WL 4730464, at *2 (E.D. Tex.
2009)(signatory’s signing capacity corrected); Gipson v. Mattox, 511 F. Supp.
2d 1182, 1191 (S.D. Ala. 2007) (court allowed unspecified “glitch” in
assignment to be corrected); LP Matthews LLC v. Bath & Body Works, Inc.,
458 F. Supp. 2d 211, 215 (D. Del. 2006) (“the Greenspan parties always
intended to assign their rights to the ‘062 patent to the Greenspan Corporation
. . . and, but for their mistaken use of the term ‘Company,’ they would have
done so.”). See also Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251 (Fed.
Cir. 2000) (incorrect patent number deemed corrected in license.)

       Nor has the government suggested that it or anyone was prejudiced by




                                        9
the difference in names.3 There is no evidence, for example, of other litigation
in the name of Security Point Media, Inc. Nor has either party been able to
find an entity named Security Point Media, Inc. The latter point in particular
we find to be circumstantial support for Mr. Ambrefe’s declaration. In sum,
we construe the assignment to be to plaintiff’s predecessor-in-interest,
SecurityPoint Media, LLC.

B. Is Plaintiff Barred By Collateral or Judicial Estoppel?

       Defendant also asserts that plaintiff should be collaterally and judicially
estopped from asserting ownership of the 460 patent in this suit because a
related entity, New Media, also controlled by Mr. Ambrefe, succeeded in
obtaining a consent judgment against the Adason Group for infringement of
the same patent. The facts are undisputed. Plaintiff concedes that New Media
successfully sued Adason for patent infringement. Indeed, in order to enforce
its judgment, it pursued Adason in the latter’s bankruptcy proceeding in
bankruptcy court in Georgia. The district court in Florida, in entering
judgment for New Media, recited that New Media owns the 460 patent,
although that issue was not disputed.

       A. Collateral Estoppel

        Collateral estoppel is a judicially created doctrine applied by the courts
to protect the finality of judgments by ensuring that parties are not able to
collaterally attack issues decided previously in other courts. See generally
Montana v. United States, 440 U.S. 147, 152 (1979). The Federal Circuit
applies a four part test for collateral estoppel: (1) the issue is identical to one
decided in the first action; (2) it was actually litigated in the first action; (3)
resolution of the issue was essential to final judgment in the first action; and
(4) the party against whom estoppel is invoked had a full and fair opportunity
to litigate the issue in the first action. Innovad Inc. v. Microsoft Corp., 260
F.3d 1326, 1334 (Fed. Cir. 2001).

        We can assume that New Media is sufficiently aligned with plaintiff
that plaintiff would be bound by New Media’s actions. Nevertheless, we find
collateral estoppel a poor fit for the present circumstances. There is no


3
 Defendant in fact stipulated to plaintiff’s ownership of the patent in 2015.
ECF No. 188.

                                        10
question that New Media’s ownership of the 460 patent was alleged by the
complaint, but it was not disputed. Defendant submits that, when a fact is pled
and the court enters a judgment on stipulated facts, that fact has been adjudged
and thus litigated for purposes of collateral estoppel. Defendant cites the
Restatement of Judgments and the Federal Circuit’s opinion in Enovsys LLC
v. Nextel Communications, Inc., 614 F.3d 1333 (Fed. Cir. 2010), for support.

        “When an issue is properly raised, by the pleadings or otherwise, and
is submitted for determination, and is determined, the issue is actually litigated
within the meaning of this Section.” Restatement (Second) of Judgments § 27
comment d (1982). We find that the neither the judgment against Adason nor
New Media’s attempts to enforce it in bankruptcy proceedings properly
submitted the issue for determination within the meaning of the restatement
quoted above. As the Seventh Circuit stated, “[t]his requirement is generally
satisfied if the parties to the original action disputed the issue and the trier of
fact resolved it.” Cont'l Can Co., U.S. A. v. Marshall, 603 F.2d 590, 596 (7th
Cir. 1979). Adason never challenged New Media’s standing to assert the
patent against it, and the district court thus had no occasion to decide the issue.

        In the Enovsys case cited by defendant, the Federal Circuit found that
the inventor’s divorce proceedings did have a preclusive effect because
ownership of community property, including a patent obtained during the
marriage, under California law, is a necessary issue to a petition for dissolution
of marriage. Thus, the court found that issue was litigated and decided by the
state court despite the fact that the court only adopted the representation of the
parties that no community property existed submitted in a joint petition for
divorce. Enovsys LLC, 614 F.3d at 1342-43. We do not find the suit against
Adason to be analogous.

       We need not address the other elements of collateral estoppel.4 The
issue of ownership was not actually litigated and thus the doctrine does not bar


4
  We also cannot say whether the issue was essential to the district court’s
judgment against Adason. Had New Media been presented with a challenge
to its standing in that suit, it may have proved a license to assert the patent
against Adason. Cf. Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702
F.3d 640, 649 (Reyna, J. dissenting) (determination of whether transfer of
rights in a trademark was an assignment was not necessary because a license
might have been granted and had the same effect for purposes of standing).

                                        11
plaintiff here.

       B. Judicial Estoppel

        Judicial estoppel is aimed at preserving the integrity of the judicial
process by preventing parties from taking contradictory positions in different
suits. Once a party has taken a position during litigation, it can be estopped
from taking a contradictory one in a later suit. See New Hampshire v. Maine,
532 U.S. 742, 749-50 (2001). The Supreme Court recognized that the doctrine
is not reducible to a simple test, but stated that certain factors are normally
considered. Id. at 750. They are: 1) the party’s current position must be
clearly inconsistent with its prior position; 2) whether the earlier court’s
acceptance of a party’s prior position would give the impression that the court
then or now was misled; and 3) whether the party taking the inconsistent
position would gain an unfair advantage or “impose an unfair detriment on the
opposing party.” Id. at 750-51. The decision of the trial court whether to
invoke the doctrine is discretionary. Data General Corp. v. Johnson, 78 F.3d
1556 (Fed. Cir. 1996).

        Defendant urges that all of those questions should be answered in favor
of invoking the doctrine here. Defendant alleges that plaintiff and its related
entities have “played fast and loose” with four different federal courts and thus
misled at least one of them by taking inconsistent positions regarding
ownership of the 460 patent. Defendant suggests that judicial resources have
been wasted by plaintiff’s inconsistent positions. The government finds itself
at a disadvantage because allowing plaintiff, or affiliated entities, to take
differing positions regarding ownership of the patent “is contrary to the law on
patent standing.” Def.’s Mot. to Dismiss 32.

        Plaintiff counters that the prior innocent mistakes of it and its counsel
should not be held against it now under this equitable doctrine. It also urges
that, because the issue of patent title was never raised in those other courts, it
has not affirmatively misled any of the courts. Thus the reasons for the
doctrine do not apply here. Further, it argues that defendant has not shown any
particularized harm or any unfair advantage gained by SecurityPoint due to its
earlier mistake in district and bankruptcy court.

        Although we are not sanguine with the repeated mistakes made by
plaintiff and its affiliates, not to mention counsel--words do matter--we find
that application of judicial estoppel to these facts is inappropriate.

                                       12
Notwithstanding the filing of the complaint against Adason, New Media did
not undertake any effort to persuade the district courts of its title to the patent
as the issue was not litigated. Thus we do not view what occurred as a
conscious deception. Mistakes were made, but we are not persuaded they
were anything but innocent. See Scarano v. Central R. Co. of N.J., 203 F.2d
510, 513 (3rd Cir. 1953) (stating that it is “intentional self-contradiction . . .
used as means of obtaining unfair advantage” that the doctrine should prevent).
Further, defendant has not shown how it has been unfairly prejudiced. It was
not a party to the earlier suits, it has not been forced to defend multiple suits
asserting the same patent, nor has the case been made that plaintiff has gained
an unfair advantage in this litigation. In sum, under these circumstances,
judicial estoppel will not preclude plaintiff from asserting its ownership of the
patent.5

                                 CONCLUSION

       In conclusion, we find that the 2003 assignment from Mr. Ambrefe to
Security Point Media, Inc. was effective to create a chain of title that can be
traced to the current plaintiff. We find the application of the equitable
doctrines of collateral and judicial estoppel against plaintiff here not to be
warranted by the facts. Standing is thus established. Accordingly, defendant’s
motion to dismiss is denied. This case will proceed to trial on damages.



                                             s/Eric G. Bruggink
                                             ERIC G. BRUGGINK
                                             Senior Judge




5
  We note also that the courts are generally reticent to apply the doctrine of
judicial estoppel to establish jurisdictional facts or positions. See, e.g., Whiting
v. Krassner, 391 F.3d 540, 544 (3rd Cir. 2004); Palafox v. Street Assocs., L.P.
v. United States, 114 Fed. Cl. 773, 785 (2014) (surveying cases in various
circuits declining to apply the doctrine to confer or prevent jurisdiction).
Standing is one such jurisdictional position.

                                        13
