Full opinion text
DECISION AND ORDER GRANTING DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S CLAIMS UNDER U.S. PATENT NO. 5,212,773 (“THE ’773 PATENT”) FOR LACK OF STANDING, OR IN THE ALTERNATIVE, GRANTING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT FOR NON-INFRINGEMENT McMAHON, District Judge. Before me are several motions relating to the viability of plaintiffs claims for infringement of U.S. Patent No. 5,212,773 (“the ’773 patent”), relating to a store-and-forward system for transmitting messages from input to output circuits within a massively parallel processor. For the reasons stated below, I conclude that (1) IBM’s motion for summary judgment dismissing the case on the ground that plaintiff does not have title to the patent, and thus cannot maintain this proceeding, should be granted; and (2) assuming there is standing, IBM is entitled to summary judgment dismissing TM’s infringement claims. While the ’773 patent is enforceable, IBM’s products do not infringe the patent’s claims as interpreted by this Court. Prior Proceedings 1. On November 8, 1999, this Court entered an order following a so-called Markman hearing, see Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, in which I construed the claims in suit under the ’773 patent. A supplemental Markman opinion was issued on December 17, 1999. Familiarity with that decision is assumed. See TM Patents, L.P. v. International Bus. Machs., 72 F.Supp.2d 370 (S.D.N.Y.1999). 2. On July 28, 2000, this Court entered an order disposing of a number of pending motions with regard to both the ’773 patent and the other patent in suit. However, the Court ordered a hearing in connection with TM’s motion for a declaration that the ’773 patent was in fact enforceable and the parties’ cross-motions for summary judgment on the issue of infringement of the ’773 patent. That hearing was held on September 21, 2000. 3. On September 12, 2000, IBM filed with the Court a suggestion that TM had never obtained valid title to the ’773 patent. I indicated that IBM’s submission should be treated as a motion to dismiss for lack for subject matter jurisdiction and directed TM to respond. It filed papers in opposition on September 20. IBM filed a supplemental brief on October 6, addressing issues that were the subject of questions at the September 21 hearing. TM, at the Court’s invitation, filed a reply to that brief on October 6. Thereafter, the parties filed written responses to questions propounded by the Court. I IBM’S CHALLENGE TO THE COURT’S SUBJECT MATTER JURISDICTION Statement of Facts IBM contends that this Court lacks subject matter jurisdiction because TM procured the ’773 patent through assignment from someone who never held valid title to the patent. While the parties have not presented me with extensive affidavit testimony or with live witnesses, they have assembled a plethora of ancient memoran-da in order to reconstruct the history of this patent’s ownership. The pertinent facts (which for the most part are undisputed, though the conclusions that follow from them are not) are as follows: The invention under the ’773 patent, entitled Wormhole Communications Arrangement for Massively Parallel Processor, was the brainchild of W. Daniel Hillis. At the time of the invention, Hillis was a graduate student at Massachusetts Institute of Technology. His attendance at M.I.T. was funded by the Hertz Foundation, a private foundation. He was not the direct recipient of federal government funding. On April 28, 1983, Thomas Engellenner of M.I.T. wrote to the Office of Patent Counsel at the Naval Underwater Systems Center in Newport, Rhode Island, and enclosed two patent applications' — Hillis’ application for what eventually became the ’773 patent (entitled “Parallel Processor”), and an application for a second invention entitled “Processor/Memory Circuit.” In his letter, Engellenner disclosed to the Navy that M.I.T. was electing to treat the two patents as having arisen under Advanced Research Projects Agency (“ARPA”) Contract N-00014-80-C-0505, and was further electing not to apply for the patents itself “because of budgetary constraints and the limited commercial potential perceived in the short term.” (IBM 9/12/00 Submission at Ex. 2.) IBM has not supplied the Court with a copy of this contract, and given its extensive efforts (via document requests and Freedom of Information Act inquiries) to locate one from any and every possible source, I am constrained to conclude that no copy exists. However, IBM has located a March 1982 document that appears to be a modification or extension of this contract. (IBM’s Oct. 17 Submission at Ex. 4.) The wording of Engellenner’s letter is curious, in that M.I.T. does not assert that work on either invention was actually funded by the Department of the Navy. Indeed, what MIT said was almost deliberately opaque: The inventors herein are primarily a group of graduate students at M.I.T. but from time to time a number of these inventors have been employed by M.I.T. as research associates funded by ARPA. (Id.) Engellenner did not identify how many inventors were involved in creating the two inventions and also did not state which (or how many) of those inventors fell within the ambit of “a number of inventors” who had been “employed by M.I.T. as research associates funded by ARPA.” In particular, M.I.T. did not specifically identify Hillis as one of those Government-funded graduate students, or the invention for which Hillis alone was responsible as having been ARPA-funded. Nonetheless, M.I.T. included Hillis’ invention in the ambit of its ARPA disclosure. (Id.) And even though his fellowship was privately funded, Hillis, in contemporaneously published articles, admitted that he was working on an invention at MIT’s Artificial Intelligence Laboratory, funded in part by Contract N-00014-80-C-0505 (IBM 10/6/00 Submission at Ex. 9, 10.)— the very contract under which Engellenner claimed Government sponsorship for both inventions disclosed in his letter to the Navy. This “connection machine,” as he called it, was the invention eventually embodied in the ’773 patent can be seen by reading a 1982 article in the International Journal of Theoretical Physics, where Hillis described the proposed architecture of the connection machine as “a locally connected array of processing-memory cells.” (IBM 10/6/00 Submission at Ex. 10.) In addition, documents provided to IBM by M.I.T. include a copy of Hillis’ original patent application (Ser. No. 499, 474), filed on May 31, 1983. It contains a handwritten notation “3803” in the corner; “3803” is the case number assigned to Hillis’ invention by M.I.T. (Id. at Ex. 6.) On the same day that Engellenner wrote to the Navy, he also wrote a memorandum to Hillis, summarizing discussions they had held during the preceding weeks (IBM 9/12/00 Submission at Ex. 3.) It appears from the memorandum that Hillis and his patent attorney had approached the M.I.T. Patent, Copyright & Licensing Office on a relatively urgent basis in order to clarify his own ownership rights — and perhaps to induce M.I.T. to accept reassignment of the inventions — so that he could enter into an arrangement with IBM to manufacture prototype chips employing the invention. The first of these discussions apparently took place on March 23, 1983, according to a memorandum that Engellenner wrote to Arthur A. Smith, Jr., the head of M.I.T.’s patent office, on that very day. (TM 9/20/00 Submission at Ex. C.) Engellenner’s memorandum to Smith, if taken at face value, discloses that even Hillis conceded that some portion of his work could be considered Government-funded: I explained to Hillis M.I.T.’s basic policy on inventions, that being, that if an invention is conceived or reduced to practice at M.I.T. with the use of sponsored research funds or significant amounts of M.I.T. funding or facilities, agreements signed by all employees and visiting scientists require that the invention be assigned to M.I.T. Hillis and his attorney felt that there were probably more than one invention here and that at least some aspect of the patent application being prepared by [the patent attorney] would belong to M.I.T. because of ARPA sponsorship, [sic] (Id. at p. 1.) (emphasis added). Of course, the highlighted language is hearsay within hearsay, and I have some difficulty concluding that it would be admissible, even under the liberal standard of Fed.R.Evid. 807 — both because Hillis himself later created documents suggesting that neither patent was created under Government sponsorship or belonged to M.I.T. (IBM 9/12/00 Submission at Ex. 5), and because the memo contains certain representations that appear to be inconsistent with the record. For example, Engellenner’s memorandum states that Hillis claimed “a routing circuit” as belonging to him, while acknowledging that “a processing element (which was purportedly developed with ARPA sponsorship)” probably did not. (TM 9/20/00 Submission at Ex. C at 2.) However, M.I.T. Case No. 3802, which was assigned to a “Processor/Memory Circuit ” (emphasis added), is listed in the relevant documentation as having been invented by Hillis and seven other graduate students (Id. at Ex. D.), while Hillis’ singular invention was assigned M.I.T. case number 3803 and entitled “Parallel Processor.” (Id.) Nonetheless, no one disputes that M.I.T. lacked interest in owning and exploiting the inventions itself and was more than happy to waive its rights in the invention. However, in its letter to the Navy disclosing the patents (IBM 9/12/00 Submission at Ex. 2.), M.I.T. conceded nothing in terms of Hillis’ sole ownership of any patents. Indeed, in his memorandum to Hil-lis, Engellenner identified Hillis (and another student) as having “from time to time been employed as research assistants funded by ARPA.” (Id. at Ex. 3 at p. 1.) Thus, it seems that M.I.T. took the position that any and all patent rights associated with both inventions belonged to it in the first instance, whether Hillis thought so or not. And while the university volunteered to waive its rights in Hillis’ invention, M.I.T. also specifically advised Hillis that he would need to file papers with the Department of the Navy in order to protect his title to the invention. (Id. at Ex. 2.) M.I.T. advised Hillis, at the time it offered to waive its rights in the invention that became the ’773 patent, that it did so “subject only to the following conditions:” first, your patent application should be amended to recite that “the government has rights in this invention pursuant to a contract with the Advanced Research Projects Agency No. N-00014-80-C-0505” and any licenses issued to commercial concerns under these inventions should acknowledge the government’s royalty-free license to these inventions .... [other conditions omitted] (Id. at Ex. 3 at pp. 1-2.) Engellenner then stated, “If these terms are agreeable to you, I will be happy to present your case to the patent committee.” (Id.) There is no evidence in the record to indicate whether Hillis did qr did not consent to M.I.T.’s conditions, although, as will be seen below, the 1991 patent application that resulted in the issuance of the ’773 patent did not contain any of the language demanded by the M.I.T. as a condition of its waiver. (Id. at Ex. 11.) I surmise that the ’773 patent application did not contain MIT’s suggested language because Hillis took the position that at least one of the inventions he discussed with Engellenner was his invention and his alone. Indeed, Hillis represented to the Department of the Navy, in a letter he wrote on November 14, 1984, that both inventions were his. Nonetheless, in that letter, Hillis very deferentially asks the Navy to authorize his rights in both inventions: P.C. Lall, Esquire Office of Patent Counsel Naval Underwater Systems Center Department of the Navy Building 142 Newport, Rhode Island 02840 SUBJECT: Invention Disclosure under ARPA Contract N-0014-80-C-0505 MIT Case 3802 “Processor/Memory Circuit” MIT Case 3803 “Parallel Processor” Dear Mr. Lall: I am writing to request authorization to retain the patent rights on the inventions cited above. Because these inventions were developed when I was a student at MIT supported by a fellowship from the private Hertz Foundation and not through any government grants, it is my understanding that I retain the rights to patents that may be issued. I further understand that without addressing the question of ownership of the patent rights, MIT has elected not to seek patent protection for these inventions and suggested that retention of rights by the inventors is in the best interest of the public, as letters from MIT to your office indicate. Through my affiliation with Thinking Machines Corporation, I am actively involved in continuing and expanding development of the inventions. We are integrating computer architecture and software innovations that promise important improvements in addressing urgent and very large scale Department of Defense problems. We are also exploring the application of my inventions to solving data processing concerns of other Federal agencies, and are both convinced of and dedicated to realizing the potential for comparable gains for non-Defense computational problems. Further, related to my deep appreciation of the value of the technology transfer to the civilian economy, we are aggressively designing applications software for responding to classes of problems of direct interest to society at large. I close by repeating my request for your consideration in authorizing my retention of patent rights on the referenced inventions. Your kind attention to this matter is very much appreciated. W. Daniel Hillis (Id. at Ex. 5.) (emphasis added) It is not true, as TM now asserts (See TM 9/20/00 Submission at n.4.), that the Navy “dropped the matter” after receiving the above-quoted letter containing Hillis’ rather veiled claim of right to the patents. What is true is that the Government was perfectly willing to authorize Hillis to retain ownership of the patents. Indeed, the Navy forwarded the necessary forms on at least two occasions: once to M.I.T. in November 1984, together with a request to provide the forms to those inventors who wanted to retain rights in the ARPA contract inventions (IBM 9/12/00 Submission at Ex. 4.), and once directly to Hillis in April 1986 (IBM 9/12/00 Submission at Ex. 7.). However, the Navy, having been notified by M.I.T. that it elected to treat the patents as having arisen under Government sponsorship, took the position that Hillis’ rights in the invention were subject to the same conditions as M.I.T.’s rights. These, of course, included a royalty-free license to the Government. Hillis — by now employed by plaintiffs’ predecessor-in-interest, the now-defunct Thinking Machines Corporation — was apparently no more interested in adjudicating this matter of ownership with the Navy than he had been with M.I.T. So he took the path of least resistance. He did not sign the forms the Navy required. Neither did he send a letter to the Navy advising them that he disputed the Government’s assertion that he needed to sign anything at all. I can only speculate about why Hillis, having asked the Navy for permission to keep his inventions, did not sign the forms that were sent to him by both M.I.T. and the Navy. The record is devoid of evidence on the subject; it contains no affidavit from Hillis, and his deposition testimony demonstrates a total lack of recall about the forms. There is no dispute, however, that he did not sign them. M.I.T. sent a set of confirmatory instruments (possibly those sent to M.I.T. by the Navy in November 1984) to Dr. Hillis at least as early as May 3, 1985. That they had not been signed and returned some 11 months later is evidenced by his receipt of a letter from M.I.T. dated April 3, 1986, warning Hillis that he was endangering his title by failing to return them: We have recently been called by Ms. Ina Griffith of the Office of Naval Research who told us that you have not yet returned the instruments to ONT. Ms. Griffin asked us to contact you on this matter. We strongly advise you to complete these instruments, since the lack of them can endanger your title to the inventions. (IBM 9/12/00 Submission at Ex. 6.) (emphasis added) In spite of this, Hillis did not return the forms, as reflected in M.I.T.’s June 24, 1987 “Report of Inventions and Subcontracts (Final)” for Contract No. N-00014-80-C-0505, which indicated that confirmatory instruments for Case No. 3803 had not been forwarded to the Navy as Contracting Officer. (IBM 10/6/00 Submission at Ex. 4.) Ultimately, the ’773 patent application, under the title “Wormhole Communications Arrangement for Massively Parallel Processor,” was filed on Feb. 22, 1991. Hillis listed himself as the sole inventor. He did not disclose any governmental interest in the patent, including any compulsory license. The application for the ’773 patent explicitly relates back to the May 31, 1983 application, Ser. No. 499,474 (“Parallel Processor”) (“the great grandfather application”), which the parties agree is M.I.T. Case No. 3803, the original Hillis invention. As discussed below, the ’773 patent is the result of successive applications that could not, as a matter of law, contain additional information or a different invention than that described in the original application. In view of the foregoing, IBM contends that Hillis lacked title to assign to Thinking Machines, because he failed to file the paperwork required by 35 U.S.C. § 201(d). Of course, if Hillis did not have valid title, then he could not convey good title to Thinking Machines, which in turn could not convey good title to plaintiffs — or so IBM argues. Since only a patent owner has standing to sue for infringement (except in a few discrete instances that are not relevant here), such a finding would be the end of the matter where the ’773 patent is concerned. Plaintiffs do not dispute that Hillis never sent in the forms that would have perfected his title as against the Government. They read the documents to suggest that Hillis never agreed with M.I.T. about Government sponsorship of the invention that became the ’773 patent, and argue that Hillis needed no waiver by the Government because the invention was not Government-sponsored. Plaintiffs do admit, however, that there was never any formal adjudication of this controverted issue. As happens all too often in these situations, both Hillis and his assignor, Thinking Machines, were content to leave the situation murky. IBM, which has a lot riding on being able to knock out TM’s claims under ’773 patent, is not. Plaintiffs do not suggest that this Court embark on the time-consuming task of resolving whether ’773’s wormhole routing message network was invented with ARPA sponsorship back in the early 1980s — at least, not at this juncture. Rather, they make a number of purely legal arguments about why this Court has jurisdiction over the ’773 infringement claims. First, TM argues that it has sufficiently pled jurisdiction and standing, and that the resolution of any factual disputes must abide the trial of this action. Second, plaintiffs contend that IBM is estopped to challenge TM Creditors’ title, because it has repeatedly admitted TM’s title in documents previously filed in this action — indeed, as recently as last summer. Third, plaintiffs assert that the Bankruptcy Court's award of title to the ’773 patent to TM Creditors during Thinking Machines’ bankruptcy proceeding — a proceeding to which both IBM and the Government were parties, and in which TM contends the issue of defective title could and should have been raised — is res judi-cata on the question. Fourth, TM claims that its title to the patent was secured by virtue of its recording of same following the bankruptcy proceeding, citing the patent recording statute, 35 U.S.C. § 261. Fifth, if all else fails, TM asserts that IBM has the burden to offer sufficient competent evidence to warrant a finding that it lacks ownership of the patent, and that it has failed to do so. At a minimum, TM asserts that there is a disputed issue of fact on the question. Discussion A. The Issue of Standing is Jurisdictional and Must Be Determined by the Court at the Outset Before a federal court can consider the merits of a legal claim, the person seeking to invoke the jurisdiction of the court must establish the requisite standing to sue. See Whitmore v. Arkansas, 495 U.S. 149, 154, 110 S.Ct. 1717, 109 L.Ed.2d 135 (1990). “Whether a claimant has standing is the threshold question in every federal case, determining the power of the court to entertain the suit.” In re Gucci, 126 F.3d 380, 387-88 (2d Cir.1997), (quoting Warth v. Seldin, 422 U.S. 490, 498, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975)). It remains open to review at all stages of the litigation. See National Org. for Women v. Scheidler, 510 U.S. 249, 255, 114 S.Ct. 798, 802, 127 L.Ed.2d 99 (1994). Standing requirements drawn from the Constitution look to whether the plaintiff has made out a ‘case or controversy’ between himself and the defendant within the meaning of Article III. See Warth v. Seldin, 422 U.S. 490, 498-499, 95 S.Ct. 2197, 2205, 45 L.Ed.2d 343 (1975). The plaintiff can do this by showing he has an “injury in fact,” or a “distinct and palpable injury.” Association of Data Processing Serv. Orgs. v. Camp, 397 U.S. 150, 90 S.Ct. 827, 25 L.Ed.2d 184 (1970); Valley Forge Christian College v. Americans United for Separation of Church and State, 454 U.S. 464, 102 S.Ct. 752, 70 L.Ed.2d 700 (1982). If TM is not the true owner of the patent, it suffers no injury in fact as a result of any alleged infringement. To bring suit for patent infringement, a plaintiff must have legal title to or be the exclusive licensee of the patent in suit. See Enzo APA & Son, Inc. v. Geap-ag A.G., 134 F.3d 1090, 1093 (Fed.Cir.1998); Abbott Lab. v. Diamedix Corp., 47 F.3d 1128, 1130 (Fed.Cir.1995); Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1578-79 (Fed.Cir.1991). Thus, patent ownership is a prerequisite for application of the infringement statute, and also confers standing. There is some confusion as to whether the question of patent ownership should properly be characterized as a challenge to TM’s standing to bring suit, or to the court’s subject matter jurisdiction. Two other courts in this district have dismissed infringement claims when the plaintiff did not own title to the patent, on the basis that plaintiff “lacked standing to invoke the subject matter jurisdiction of the court.” RAD Data Communications, Inc. v. Patton Elecs. Co., 882 F.Supp. 351, 352 (S.D.N.Y.1995); Imatec, Ltd. v. Apple Computer, Inc., 81 F.Supp.2d 471 (S.D.N.Y.2000); see also GAIA Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 780 (Fed.Cir.1996) (calling the standing question “jurisdictional” and dismissing plaintiffs infringement claims on standing grounds). These holdings may have improperly conflated the issue of standing with subject matter jurisdiction. Cf. DaSilva v. Kinsho Int’l Corp., 229 F.3d 358 (2d Cir.2000) ; However, I need not delve into this theoretical problem at the present time. It does not matter whether this Court should properly treat the defendant’s challenge to ownership as a motion for lack of subject matter jurisdiction under Fed.R.Civ.P. 12(b)(1), or for failure to state a claim due to lack of standing under 12(b)(6), or even as a motion for summary judgement on the merits of the question of ownership. As will be seen below, TM has failed to make the necessary showing of ownership under any theory. B. Judicial Estoppel Does Not Bar IBM From Raising the Issue of Standing IBM has consistently admitted during the course of this litigation that TM Creditors LLC has title to the ’773 patent. (See Defs Answer to the First Am. Compl., filed March 6, 1998, ¶ 15; Defs Am. Answer to the First Am. Compl., filed August 28, 2000, ¶ 15.) IBM also moved to add TM Creditors, which was not originally a party to this action, as a party plaintiff, asserting in connection with its motion that title to the ’773 patent belonged to TM Creditors. (See Def.’s Mem. in Supp. of Def.’s Mot. To Dismiss, filed May 1, 1997, at p. 2, 12.) While it is arguable that the first answer, and even the joinder of TM Creditors, predates IBM’s awareness of the Hillis issue, it is quite clear that IBM’s amended answer, filed August 28, 2000, came long after defendant became aware of a possible cloud on TM’s title. Indeed, IBM first raised the jurisdictional issue with counsel for TM by letter dated April 4, 2000. (IBM 9/12/00 Submission at Ex. 10.) Nonetheless, it admitted TM Creditors’ ownership of the ’773 patent almost five months later — and a mere two weeks before it filed the suggestion of lack of jurisdiction with the Court. As far as TM is concerned, that should end the matter. TM argues that these admissions should prevent IBM from challenging TM’s ownership of the patent under the theory of judicial estoppel. An admission made during the course of the litigation, however, is not the same as judicial estoppel, which “prevents a party from asserting a factual position in a legal proceeding that is contrary to a position previously taken by [the party] in a prior legal proceeding.” Bates v. Long Island R. Co., 997 F.2d 1028, 1037 (2d Cir.1993); see also 18 Charles A. Wright, Arthur R. Miller & Edward H. Cooper, Fed. Pract. & Proc. § 4477 (1981). The theory may be invoked where, (1) the party against whom the estoppel is asserted took an inconsistent position in a prior proceeding, and (2) that position was adopted by the first tribunal in. some manner. See Bates at 1038. The doctrine clearly does not apply in this case. IBM asserted TM Creditors’ ownership of the patent in this proceeding for the purposes of joinder. The purposes of judicial estoppel — to “preserve the sanctity of the oath” and to “protect judicial integrity by avoiding the risk of inconsistent results in two proceedings ” — are not at issue here. See Simon v. Safelite Glass Corp., 128 F.3d 68, 71 (2d Cir.1997) (internal quotation marks omitted) (emphasis added). IBM has not bene-fitted from some prior judicial determination that TM owns the ’773 patent, only to claim the opposite is true here for other purposes. Furthermore, the Second Circuit has recognized that “judicial estoppel does not apply when the first statement resulted from ‘a good faith mistake or an unintentional error.’ ” Id. at 73 (citations omitted). Alternatively, TM argues that IBM’s admissions of TM’s ownership are formal judicial admissions that are conclusive against IBM in this action. See Western World Insurance Co. v. Stack Oil, Inc., 922 F.2d 118, 122 (2d Cir.1990).. However, “[s]ince an objection to subject matter jurisdiction goes to the power of the court to hear and decide the case, parties may not create or destroy jurisdiction by agreement or by consent.” 5A Wright & Miller, Fed. Prac. & Proc. § 1350 at 204 (2d ed.1990); see also Members for a Better Union v. Bevona, 152 F.3d 58 (2d Cir.1998). Similarly, the parties cannot by stipulation confer standing on a non-patent owner in contravention of the Constitution and the statute. IBM is thus correct that it cannot create otherwise non-existent jurisdiction by admission. See Barhold v. Rodriguez, 863 F.2d 233, 234 (2d Cir.1988). C. The Question of Ownership Is Not Res Judicata By Virtue of the Bankruptcy Court’s Judgment Of equal or greater interest to this Court is the impact of the disposition of the ’773 patent by the Bankruptcy Court in the District of Massachusetts in connection with Thinking Machines’ bankruptcy proceeding. TM argues that the claim of ownership is res judicata, or precluded, by virtue of the determination of the Bankruptcy Court in the Thinking Machines bankruptcy. In that proceeding, to which IBM was a party, TM Creditors paid more than $27 million in creditor claims in exchange for title to Thinking Machines’ patents. The ’773 patent was one of those patents. The Bankruptcy Court entered an order confirming Thinking Machines’ Reorganization Plan, and ¶ 12 of that order provided that all transfers of property to the Plan Entities (of which TM Creditors was one) as provided in the Plan “... shall be legal, valid and effective and shall constitute the transfer to and shall vest in the Plan Entities good title to such property free and clear of all liens, charges, Claims, encumbrances, Administrative Claims, interests and rights of offset, except as expressly provided in the Plan or this Confirmation Order....” In re Thinking Machines Corp., No. 94-15405 (Bankr.D.Ma. Feb. 2, 1996) (excerpts attached as TM 9/20/00 Submission at Ex. K.) A final judgment of a United States Bankruptcy Court is, of course, res judicata as to all matters properly before it that are necessary to that final judgment and that were or could have been litigated in the proceeding. See St. Pierre v. Dyer, 208 F.3d 394, 399 (2d Cir.2000); National Labor Relations Bd. v. United Techs. Corp., 706 F.2d 1254, 1259 (2d Cir.1983); In re Teltronics Servs., 762 F.2d 185, 190 (2d Cir.1985) (applying res judicata rules to bankruptcy matter). Under this doctrine, also referred to as “claim preclusion,” a subsequent action will be barred where a claim between the parties has been litigated and decided. In determining whether claim preclusion applies, a court may consider whether (1) the prior decision was a final judgment on the merits; (2) the litigants were the same parties; (3) the prior court was of competent jurisdiction; and (4) the causes of action were the same. See Corbett v. MacDonald Moving Servs., Inc., 124 F.3d 82, 87-88 (2d Cir.1997); In re Teltronics Servs., Inc. at 190. In the bankruptcy context, the court also asks whether an independent judgment in a separate proceeding would “impair, destroy, challenge, or invalidate the enforceability or effectiveness” of the reorganization plan. Sure-Snap Corp. v. State St. Bank and Trust Co., 948 F.2d 869, 875-76 (2d Cir.1991), although this particular inquiry “may also be viewed as an aspect of the test for identity of the causes of action.” Corbett at 88. However, the catch for our purposes is that the res judicata effects of a judgment extend only to matters that were properly before the Bankruptcy Court or that could properly have been brought there. See In re Teltronics at 190. Therein lies the rub. The general principles are not disputed. Under the Bankruptcy Code, a debtor’s estate consists of, inter alia, “all legal or equitable interests of the debtor in property as of the commencement of the case.” 11 U.S.C. § 545(a)(1). The filing of a bankruptcy case does not, and cannot, give a debtor or its creditors greater rights in property than the debtor had prior to bankruptcy. See In re Brown, 734 F.2d 119, 124 (2d Cir.1984) (nonetheless affirming debtor’s entitlement to avoid creditor’s lien and enjoy exemption under bankruptcy Code); Old Stone Bank v. Tycon I Bldg. Ltd. Partnership, 946 F.2d 271, 276 (4th Cir.1991). As a result, the Bankruptcy Court’s jurisdiction “does not extend to property that is not part of a debtor’s estate,” Rutherford Hosp., Inc. v. RNH Partnership, 168 F.3d 693, 699 (4th Cir.1999), and even a confirmed bankruptcy plan “cannot furnish anyone rights to what was not property of the debtor’s estate.” Terry Oilfield Supply Co. v. American Sec. Bank, N.A., 195 B.R. 66, 73 (S.D.Tex.1996). Thus, the Bankruptcy Court could not have passed title to the ’773 patent if Thinking Machines had no title to pass. IBM contends that no attempt was actually made in the bankruptcy proceeding to transfer any rights in Thinking Machines’ patents beyond those the debtor actually owned. IBM is correct. The First Amended Joint Plan of Reorganization transferred only “the Debtor’s right title and interest in and to... patents and patent applications of the Debtor” (IBM 10/6/00 Submission at Ex. 24 at 38.), while the Collateral Patent Assignment assigned “all of Assignor’s right, title and interest” in the patents to TM Creditors. (Id. at Ex. 25 at frame 843.) IBM observes, correctly, that nothing in the “free and clear” language quoted above from the Final Judgement of the Bankruptcy Court is inconsistent with that, or expands on the inherent limitation of the Plan and the Collateral Assignment — namely, that they convey and/or assign whatever interest the Debtor has, and nothing more. Both parties acknowledged at the hearing that no one involved in the Bankruptcy proceeding believed that the court actually adjudicated whether Thinking Machines owned the ’773 patent. And there is no question in my mind that the Bankruptcy Court had jurisdiction to resolve disputes over the debtor’s ownership to any particular estate asset. See 11 U.S.C. §§ 363(f) and 1123; Celotex Corp. v. Edwards, 514 U.S. 300, 307-08, 115 S.Ct. 1493, 1498-99, 131 L.Ed.2d 403 (1995). Thus I have no doubt that a challenge to ownership of the ’773 patent could have been raised in the bankruptcy context. The question is whether the failure to do so bars litigation of that issue before me. IBM asserts that it neither challenged nor questioned Thinking Machines’ title to the patent because it could not have done so, for several reasons. First, the issue was not “identical” to any issue raised in the bankruptcy, given the special meaning of “identity” for former adjudication purposes. Second, nothing in the Plan alerted it to the possibility of a title defect. Third, IBM had no incentive to raise the issue in the absence of notice. Fourth, IBM lacked standing to raise the issue because TM deliberately declined to create a justi-ciable controversy over any specific patent during the bankruptcy, or to identify any specific patent that they would later contend was infringed by IBM. IBM is in substantial part correct. “Under the doctrine of res judicata or claim preclusion, ‘a final judgment on the merits of an action precludes the parties or their privies from relitigating issues that were or could have been raised in that action.’ ” St. Pierre v. Dyer, 208 F.3d, 394, 399 (2d Cir.2000) (quoting Federated Dep’t Stores, Inc. v. Moitie, 452 U.S. 394, 398, 101 S.Ct. 2424, 69 L.Ed.2d 103 (1981)). IBM Was a party to the Thinking Machines’ bankruptcy. However, that did not automatically confer standing on it to challenge the debtor’s title to the ’773 patent. And “res judicata is inapplicable if formal jurisdictional or statutory barriers precluded the plaintiff from asserting its claims in the first action.” Computer Assocs. Int’l, Inc. v. Altai, Inc., 126 F.3d 365, 370 (Fed.Cir.1997). In a bankruptcy case, “a party who is not directly ‘aggrieved’ by the construction of a provision of the Plan would lack the requisite standing to be heard.” In re Johns-Manville Corp., 68 B.R. 618, 624 (Bkrtcy.S.D.N.Y.1986) (“Thus, no party may successfully prevent the confirmation of a plan by raising the rights of third parties who do not object to confirmation.”), afield in part and rec’d. in part on other grounds, 78 B.R. 407 (S.D.N.Y.1987), afield sub. nom, Kane v. Johns-Manville Corp., 843 F.2d 636 (2d Cir.1988). “Only parties adversely affected by provisions of a plan may raise an objection to confirmation based on such provisions.” In re Gaston & Snow, Nos. 93 Civ. 8517, 93 Civ. 8628, 1996 WL 694421, at * 7 (S.D.N.Y. Dec.4, 1996) (quoting In re Johns-Manville Corp., 68 B.R. at 623-24). IBM argues that the only entity that could arguably have been “aggrieved” by any attempt to usurp title to the ’773 patent was the U.S. Government (the true owner of the patent). And in fact, IBM, wearing its hat as competitor of TM, did lack standing to challenge TM’s title to the ’773 patent. It had not been charged with infringement of the ’773 prior to the bankruptcy, and it was not charged with infringement during the bankruptcy. It was not even threatened with infringement of the patent during the bankruptcy. Indeed, TM deliberately refrained from identifying IBM as a potential target of future infringement actions, in order to avoid IBM’s commencement of a declaratory judgment action touching on the validity of the patent. (IBM 10/6/00 Submission at Ex. 30.) Plaintiffs have admitted in response to IBM’s interrogatory that IBM was not on notice of alleged infringement of the ’773 patent until November 1, 1996, at the earliest. (See id. at Ex. 34.) Without even a hint that Thinking Machines planned to charge IBM with infringement of the ’773 patent, IBM had no standing to bring a declaratory judgment action against the ’773 patent. It could not have adjudicated the issue, even if it had been aware of the alleged defects in Thinking Machines’ title while the bankruptcy was pending. Justiciability “... requires an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit....” Phillips Plastics Corp. v. Kato Hatsujou Kabushiki Kaisha, 57 F.3d 1051, 1052 (Fed.Cir.1995) (refusing to issue declaratory judgment on patent ownership in light of mere license negotiations and no threat of suit). TM counters by noting that IBM internal documents reveal defendant’s fear that it might be infringing the patent. (TM 10/6/00 Submission at 8 n. 10; Pl.’s Mem. in Opp’n to Defs Mot. for Summ. J. on Non-Infringement at Ex. A.) However, under Phillips Plastics, it is a threat of suit by the patentee, not simply the inchoate fear that the patentee might sue, that confers standing. It is simply indisputable that IBM, in its position as eompetitor/po-tential infringer, could not have litigated the question now before me in the bankruptcy proceeding. However, to the extent IBM suggests that it could not have raised the issue of ownership because it had no interest whatever in uncovering defects in Thinking Machines’ title to its purported patent during the bankruptcy, I am constrained to disagree. While TM’s deliberate failure to raise the spectre of allegation rendered IBM disinterested in its status as a Thinking Machines competitor, IBM stood before the Bankruptcy Court wearing another hat as well — that of trade creditor. (See IBM’s 10/6/00 Submission at 22 n. 5.) As I understand matters, TM Creditors, the entity that ultimately took whatever patent title Thinking Machines was able to pass, was formed for benefit of the debt- or’s trade creditors — that is, they would have to look to the results of patent infringement litigations for recoupment of the amounts owed. While IBM’s trade claims were apparently infinitesimal in relation to what was at stake in connection with the enforcement of the parties’ various patents, it had the same incentive as any other trade creditor to ensure that it was getting something of value in exchange for giving up its trade debt. The trade creditors were getting the patents, but a patent without good title is not worth the paper it is written on. Nonetheless, IBM’s failure to raise the issue of ownership in the bankruptcy proceeding is not fatal to its claim here, because IBM could not have known about the possibility of a defect in the title. As a general rule, newly discovered evidence does not preclude application of res judicata. See Saud v. Bank of New York, 929 F.2d 916, 920 (2d Cir.1991). However, res judicata does not apply when the existence of the ownership issue “could not have been discovered with due diligence.” L-Tec Electronics Corp. v. Cougar Electronic Org., Inc., 198 F.3d 85, 88 (2d Cir.1999) (finding new claims based on different legal theories rather than facts). IBM contends that Thinking Machines had a duty to disclose all relevant facts concerning its assets prior to confirmation of the Plan. See 11 U.S.C. § 1125 (Disclosure Statement must contain “adequate information”). It is undisputed that no notice was given of any defect in or question about title to the ’773 patent, and the issue never arose in the proceedings. And there is no evidence before me from which I could conclude that IBM should have been on notice of the alleged defect in title. Indeed, in the context of this lawsuit, it took years of discovery from multiple parties, as well as FOIA requests addressed to the Government, before the issue crystallized. In contrast, the court in Sure Snap found that the debtor, who was bringing subsequent claims against its creditors, “had adequate information about lender liability claims, prior to commencement of the... bankruptcy proceedings.” Sure-Snap Corp. v. State St. Bank and Trust Co., 948 F.2d 869, 873 (2d Cir.1991). I agree with IBM that, in the absence of notice from Thinking Machines of possible clouds on title, the Bankruptcy Court would never have allowed a wholesale investigation to discover whether there existed some defect in TM’s title in the more than 100 patents and applications Thinking Machines purported to own. See In re Eagle-Picher Indus., 169 B.R. 130, 134 (Bkrtcy.S.D.Ohio 1994) (“one seeking to conduct [discovery] has the burden of showing good cause for the examination which it seeks.”) So while IBM would have been fatally dilatory had it sat on knowledge of a potential defect in a patent’s title, it cannot be foreclosed from litigating the patent’s ownership now, precisely because it had no such knowledge, and no way of obtaining it. Finally, res judicata is also inapplicable because the claim raised in this proceeding was not identical to the claims raised in the Bankruptcy Court. For purposes of claim preclusion, a claim “could have been raised” in a prior proceeding “only where the transaction or connected series of transactions at issue in both suits is the same, that is, where the same evidence is needed to support both claims, and where the facts essential to the second [transaction] were present in the first.” Interoceanica Corp. v. Sound Pilots, Inc., 107 F.3d 86, 91 (2d Cir.1997) (quoting SEC v. First Jersey Sec., 101 F.3d 1450, 1463-64 (2d Cir.1996)); see also Computer Assocs. Int'l, Inc. v. Altai, Inc., 126 F.3d 365, 369 (2d Cir.1997). What constitutes a single transaction “is a factual question to be determined ‘pragmatically’ based on factors such as ‘whether the facts are related in time, space, origin, or motivation, whether they form a convenient trial unit, and whether their treatment as a unit conforms to the parties’ expectations.” NBN Broad., Inc. v. Sheridan Broad. Networks, Inc., 105 F.3d 72, 78 (2d Cir.1997) (quoting Restatement (Second) of Judgments, § 24(1) (1982)). The actual litigation in the bankruptcy case between TM and IBM involved IBM’s assertion of patent infringement by the Debtor. It was in this context that the set-off issue arose — whether IBM would be free to enforce its infringement claims against the successors to Thinking Machines should those successors decide to sue IBM. IBM objected to the use of the “free and clear” language in the conveyance of the patents to TM Creditors, not because it was challenging the validity of the title that would pass to TM Creditors under the Plan, but because it feared that the use of this phrase would preclude it from asserting counterclaims. (TM 9/20/00 Submission at Ex. M.) IBM eventually dropped the objection. Nothing in that sequence of events suggests that I should find the “identity of issues” prong of a res judicata analysis to be satisfied. In sum, I conclude that res judicata does not bar IBM’s challenge to TM’s ownership of the patent. D. Nothing in the Patent Recording Statute Creates Ownership in TM if its Assignor Lacked Ownership Plaintiffs argue that, even if Dr. Hillis’s failed to obtain title to the ’773 patent, TM Creditors managed to get title simply because they recorded the assignment to them from TM Patents of the ’773 patent. The patent recording statute, 35 U.S.C. § 261, applies the common law bona fide purchaser rule to patent transfers. When the legal title holder of a patent transfers his or her title to a third-party purchaser for value without notice of an outstanding equitable claims for title, that purchaser takes entire ownership of the patent, free of any prior equitable encumbrances. See FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1573 (Fed.Cir.1991). In addition, § 261 adopts the principles of the real property recording acts, in that it “is intended to cut off prior legal interests, which the common law rule did not.” Id. at 1573-74. Under the statute: An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage. ' 35 U.S.C. § 261. By its very terms, § 261 is only a recording statute. It governs the rights of competing assignees. The statute does not address the validity of the rights purportedly transferred by an assignment. In fact, the companion regulation, 37 CFR § 3.54, expressly provides that “The recording of a document ... is not a determination by the [Patent and Trademark] Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.” (emphasis added) More to the point, the Federal Circuit has held that “the mere fact that an assignment was recorded in the PTO does not, without more, prove that a valid assignment actually took place.” GAIA Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 778 n. 3 (Fed.Cir.), amended on other grounds by, 104 F.3d 1296 (Fed.Cir.1996) (reversing lower court’s finding of standing). Clearly, § 261 does not grant an assignee any title better than the assignor had. When a statute operates to vest patent title in the Government, subsequent transfers by the inventor or anyone else, whether recorded or unrecorded, will not trump the Government’s rights in the invention. See FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed.Cir.1991) (“FilmTec”); FilmTec Corp. v. Hydranautics, 982 F.2d 1546 (Fed.Cir.1992) (“Hydranautics”). Both of the FilmTec infringement cases, arose from the same set of facts, and their similarity to the present case merits close analysis. The inventor, Cadotte, conducted his research while at MRI, a non-profit research organization, under contract to the Government. The contract, issued under authority of two federal statutes, provided that MRI: agrees to grant and hereby does grant to the Government the full and entire domestic right, title and interest in any invention, discovery, improvement or development (whether or not patentable) made in the course of or under this contract or any subcontract (of any tier) thereunder. FilmTec at 1570. Sometime between September 1977, when FilmTec was organized, and the February 1979 filing of the patent application, Cadotte made the invention that led to the patent. Cadotte left MRI in February 1978. He assigned the patent on his invention to his company, and Filmtec recorded the assignment. Cadotte claims he made the invention the month after leaving. Defendant-appellant Allied claimed Cadotte formed his invention while he was still at MRI. The trial judge did not address the question of when the invention was made, because he reached his decision in favor of granting a preliminary injunction to FilmTec on the grounds that the contract quoted above conveyed no more than equitable title to the Government. See id. at 1570. The Federal Circuit disagreed, and found the contract “expressly granted to the Government MRI’s rights in any future invention.” Id. at 1573. Thus, “[i]f a similar contract provision existed between Cadotte and MRI, as MRI’s contract with the Government required, and if the invention was made before Cadotte left MRI’s employ. .., Cadotte would have no rights in the invention or any ensuing patent to assign to FilmTec.” Id. If that was the case, Cadotte’s purported assignment to Filmtec would be “a nullity.” Id. at 1572. The court remanded for findings on both questions. On remand, the district court found that the invention was made while Cadotte worked at FilmTec, and reinstated the preliminary injunction. See Filmtec v. Allied-Signal, Inc., 988 F.2d 129, 1993 WL 2309 at *1 (Fed.Cir.1993) (“Allied”) (unpublished decision) (adopting findings of fact in Hydranautics). While Allied’s appeal was pending, the Federal Circuit resolved the issue of ownership in Hydra-nautics, a different infringement case brought on the same patent. The court concluded that the statutes governing the MRI contract clearly provided for title to any invention made or conceived under contract to vest with the Government, and that the invention conceived while Cadotte was at MRI was the same as that described in the patent. See Hydranautics at 1550-51. The Allied court concurred in the Hydranautics analysis and adopted the findings, invalidating FilmTec’s title. See Allied, 1993 WL 2309 at *1. The FilmTec cases control here. Hillis admittedly developed the inventions in the ’773 patent while he was at M.I.T. If his work was under the Government funding agreement, and if he did not comply with the requirements necessary for him to retain title, title passed to the Government, Hillis did not have anything to transfer to TM Patents, and the subsequent “transfer” to TM Creditors could not be rendered valid by recording it. The cases cited by plaintiff do not support the proposition that recording cures the defect in title. In CMS Indus., Inc. v. L.P.S. Int’l, Ltd., 643 F.2d 289 (5th Cir.1981), a holder of patent rights executed two transfers on the same| day: a recorded assignment to a subsidiary of the title, and an unrecorded reservation of the majority of rights in the parent company. See id. at 291-92. The court found that the intended effect of the two transfers was to keep the benefits of the patent as though the parent had retained title, while still recording the assignment of title. The court held that the unrecorded reservation of rights was an attempted assignment, and was thus ineffective against the bankrupt subsidiary’s creditor, who later acquired the patent rights in liquidation by assignment, and was a bona fide purchaser for value without notice of the attempted assignment. Id. at 289. This case only shows the general rule under § 261 that a recorded assignment is valid as against an unrecorded assignment. The Government did not need to record its assignment because took title by operation of law. Plaintiffs also rely on Heidelberg Harris, Inc. v. Loebach, 145 F.3d 1454, 1458 (Fed.Cir.1998). Plaintiff Loebach assigned his rights in his invention to his employer in 1980. In 1983 that company entered an agreement with defendant Heidelberg Harris in which defendant would receive an unrestricted license to the patent in 1990. See id. at 1456. In 1991 Loebach won back his right to the patent in a suit against his former employer. See id. at 1457. He then sued defendant for infringement. The Appeals court upheld Heidelberg Harris’ bona fide purchaser defense, agreeing with the district court that its title to the unrestricted license vested in 1983. See id. at 1459. Here again, defendant purchased the patent rights from an entity that, at least until 1991, had valid title. TM Patents did not. If TM’s argument were correct, any charlatan could fraudulently convey the patents of another to any assignee, who could subsequently gain good title by simply recording the fraudulent assignment. The patent recording statute is no bar to IBM’s claim. E. TM has not raised a genuine issue of fact to controvert IBM’s showing that TM does not have title to the ’773 patent. As none of TM’s arguments enables it to avoid the merits of the dispute, I turn to the facts. Both sides agree that the party seeking to invoke federal jurisdiction bears the burden of establishing standing. See Lujan v. Defenders of Wildlife, 504 U.S. 555, 561, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992); Jaghory v. New York State Dept. of Educ., 131 F.3d 326, 329 (2d Cir.1997); Imatec, Ltd. v. Apple Computer, Inc., 81 F.Supp.2d 471, 480 (S.D.N.Y.2000); Ortho Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1032-33 (Fed.Cir.1995). However, TM argues that because it has pleaded ownership, the circumstances of this case trigger an immediate shift of that burden to defendants. I disagree. 1. TM bears the burden of proving ownership of the patent The burden of establishing TM Creditor’s valid title does not shift to IBM just because IBM raised the jurisdictional issue. Cedars-Sinai Med. Ctr. v. Watkins, 11 F.3d 1573, 1583-84 (Fed.Cir.1993). TM cites Lockheed Aircraft Corp. v. United States, 213 Ct.Cl. 395, 553 F.2d 69, 88-89 (1977), for the proposition that- defendants must prove Government ownership. They argue that “[t]he ‘heavy’ burden of proving the gravamen of a Government entitlement defense, viz., conception and first actual reduction to practice within the scope of a Government procurement contract, is on the party raising that defense.” (TM 10/18/00 Submission at 2.) But Lockheed does not apply to this stage of the case. There the Government raised the defenses of invalidity and license in response to the infringement charge, and had the burden of proving those defenses. .However, before addressing the defenses, the court stated that Lockheed “has been and continues to be the sole owner of the patent in suit.” Lockheed, at 72. Thus, the jurisdictional question of ownership was not at issue. See FilmTec at 939 F.2d at 1572-73 (cautioning against confusing plaintiffs right to maintain infringement action with in jus tertii, or title in a third person, defense). Thus, to establish standing, TM must demonstrate that Hillis and TM Patents held title to the ’773 patent. TM must do more than merely plead title ownership at this stage of the case. Where a standing issue has gone beyond the pleadings to summary judgment or trial, “the plaintiff must do more than plead standing, he must prove it.” Glover River Org. v. U.S. Dept. of Interior, 675 F.2d 251, 254 n. 3 (10th Cir.1982); see also Lujan v. Defenders of Wildlife, 504 U.S. 555, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992). In Lujan the Supreme Court stated: Since they are not mere pleading requirements but rather an indispensable part of plaintiffs case, each element must be supported in the same way as any other matter on which plaintiff bears the burden of proof, i.e. with the same manner and degree of evidence required at the successive stages of the litigation. 504 U.S. at 561, 112 S.Ct. at 2136. Therefore, to survive IBM’s motion for summary judgment, TM must come forward with specific facts to support its claim of ownership, and this evidence must be sufficient evidence for a reasonable fact-finder to infer that TM holds title to the patent. 2. TM has not met its burden of proving subject matter jurisdiction In a motion to dismiss challenging the court’s jurisdiction, the district court may engage in fact-finding and “may dismiss a facially sufficient complaint for lack of subject-matter jurisdiction if the court finds, based on affidavits or other evidence outside the complaint, that the asserted basis for federal jurisdiction is not sufficient.” RAD Data Communications, Inc. v. Patton Elecs. Co., 882 F.Supp. 351, 352 (S.D.N.Y.1995) (dismissing patent infringement actions on grounds that plaintiff did not have legal title to patent-in-suit at time of alleged infringement). Here, however, there is really no need for fact-finding; the material facts are undisputed. The parties differ only in the conclusion they draw. The parties do not dispute that Hillis’ invention as claimed in the patent was developed and reduced to practice while he was at M.I.T. Neither do they dispute that the invention in the ’773 is M.I.T. Case No. 3803, “Parallel Processor,” which lists Hillis as the inventor. Nor do they dispute that the original ’464 patent application, which was filed in 1983, pertains to the invention-in-suit. Plaintiff argues, however, that Case No. 3803 was not created under a federally-funded MIT/ARPA contract, and that Hillis’ research on this invention is thus exempt from statutory requirements that he sign executory instruments in order to retain title as against the Government. Not only do they offer absolutely no evidence to support this, but IBM has provided extensive evidence to the contrary. A patentee has presumptive title to an invention. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed.Cir.1993); Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1578 n. 2 (Fed.Cir.1991) (“The entity to whom the grant of a patent is made by the PTO [or that entity’s successor in title] holds the ‘legal title’ to the patent.”). However, the United States has title to all “subject inventions” made in performing work under a funding agreement with a research organization such as M.I.T. By statute, “subject invention” is defined as “any invention conceived or reduced to practice in the performance of work under a funding agreement.” 35 U.S.C. § 201(e) (emphasis added). This means that the United States had title to any and all inventions that were either conceived or reduced to practice as a result of any work carried out at MIT’s Artificial Intelligence Laboratory under the MIT/ARPA contract. Non-profits conducting research under these government funding agreements can, under 35 U.S.C. § 202, elect to obtain title to any inventions developed under or derived from those agreements. A contractor must notify the Government of inventions made under the contract within a “reasonable time.” 35 U.S.C. § 202(c)(1). Failure to comply with the conditions of § 202 results in the Government’s acquiring title. See Thermalon Indus., Ltd. v. U.S., 34 Fed. Cl. 411, 414 (Fed.Cl.1995) (“NSF [a Government entity] acquires title to a patent, rather than merely a license, inter alia, in the event the grantee fails to disclose within a reasonable time that the patented invention resulted from the grant.”). Under 35 U.S.C. § 202(d), an individual inventor can retain title to the patent providing he or she satisfies certain explicit conditions: If a contractor does not elect to retain title to a subject invention in cases subject to this section, the Federal agency may consider and after consultation with the contractor grant requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder. The pertinent “regulations” are the Federal Acquisitions Regulations (FAR), which include specific requirements that the contractor (or the inventor if the contractor does not elect to retain title) affirmatively execute confirmatory instruments and place an appropriate statement in the patent. 48 C.F.R. § 62.227-11(f)(1), - 11(f)(4). M.I.T. Case No. 3803, which corresponds exactly to the invention described in the ’464/773 application, was part of the ARPA contract. The best evidence of this comes from Hillis himself. In his 1984 letter he requested the Navy’s authorization to retain the patent rights on both the 3803 and 3802 inventions, which can only be seen as an acknowledgment of the Navy’s rights. He also admitted in contemporaneously published articles that his work on the inventions was funded by ARPA. Furthermore, Hillis has never explicitly stated that his invention was not developed under the contract. Aside from the self-serving innuendo in his 1984 letter to the Navy, in which Hillis intimated that the inventions were not developed with Government funding, TM offers no evidence that this invention was developed outside of ARPA sponsorship. Hillis was thus obligated to execute the necessary forms with the Navy in order to obtain title. The evidence in the record