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Federal Circuit Case Law |
Checkpoint Systems, Inc., v. All-Tag Security S.A. et. al.
Decided June 20, 2005
pdf copy
Judge Schall with Judges Michel and Dyk
* The
"rule of reason standard requiring corroborating evidence extends to
claims by individuals purporting to be co-inventors."
Checkpoint sued All-Tag at the U.S. District Court for the Eastern District of
Pennsylvania for allegedly infringing claims to deactivatable labels used in the
retail industry. The claims were to an invention by Jorgensen, who worked with
Pichl. Pichl left the company and formed All-Tag, the defendant, after the
patent issued. In defense of infringement, All-Tag submitted a declaration by
Pichel and Jorgensen that they purposely had omitted Pichl as a coinventor of
the patented invention years earlier because of a contract based concern. This
prompted. Judge Petrese Tucker to granted All-Tag summary judgment of invalidity
based on 35 USC 102(f) (inventorship by another). Checkpoint appealed to the
Federal Circuit.
The Federal Circuit reversed because Jorgensen’s declaration of sole inventorship to the PTO contradicted his later declaration made during litigation. This presented a genuine issue of material fact, precluding summary judgment. The court explained that the "rule of reason standard corroborating evidence extends to claims by individuals purporting to be co-inventors."
Invalidity on 35 USC 102(f) grounds often presents an unappreciated opportunity during litigation to take advantage of inventorship complexities, particularly where co-inventors work for a different company, and therefore the invention is, at least in part, "by another."
PERSEPTIVE BIOSYSTEMS,
INC. v. PHARMACIA BIOTECH INC. et al.
Decided August 29, 2000
* A court, ignoring claimed subject matter and neglecting a careful review of conception, might find inequitable conduct where a patent applicant fails to reveal details of collaboration to a patent examiner.
PerSeptive sued Pharmacia for infringement of patent claims to chromatographic particles used to purify biomolecules. The district court apparently did not carefully construe the claims or probe deeply into conception of the claimed invention based on an understanding of the technology. The court focused on an incorrect inventor theory, and held on summary judgment that the patents were unenforceable due to inequitable conduct because PerSeptive did not divulge details of its collaboration with the manufacturer of the particles.
The CAFC affirmed, in a majority decision that did not construe the claims or determine the basis of conception necessary for determining inventorship. The CAFC majority rationalized that "the materiality of intentional false statements may be independent of the claims of the patent" because "examiners are required to reject applications under 35 USC 102(f) on the basis of improper inventorship." The CAFC thus decided, apparently without studying the claimed invention, that "it is undisputed" that another party "that supplied the materials and data" were critical to the named inventors’ conception of their invention.
A dissent from Judge Newman reviewed the claim contents, conception of the claimed invention, and materiality of information presented to the examiner. Judge Newman concluded that the inventors were properly named and that the origin of the claimed inventions were fully disclosed to the examiner. The dissent examined conception and pointed out that "only some of the experimental batches" supplied by the alleged co-inventors "exhibited" the inventive behavior and that the material and information supplied by the alleged co inventors "did not provide the understanding of the perfusive chromatography process" but rather "came from the investigations done by the named inventors." The dissent also pointed out facts in the record which indicate that the applicant followed PTO rules and had named a correct named inventor for every claim in the application. Furthermore, Judge Newman explained that the "examiner could not have made a rejection under 102(f)" thus mooting a legal basis for the inequitable conduct finding.
On its face, the majority decision appears to expand the obligation of a patent applicant to provide information concerning inventorship beyond that required in the MPEP. This unusual decision reinforces that a prudent patent applicant should create a record showing consideration of possible co-inventorship of collaborators when filing a patent application to prevent inventorship problems during litigation.
Frederic A. Stern v. The Trustees of Columbia University et al.
Decided January 17, 2006 pdf
Judge Mayer with Judges Rader and Linn
A contributor to an invention may need to “have an understanding of the claimed invention” to meet requirements for co-inventorship.
While a medical student at Columbia, Stern worked in Bito’s laboratory on the
use of prostaglandins for treating glaucoma. After Columbia obtained a patent
on this area, Stern sued Columbia at the U.S. District Court for the Southern
District of New York and asked to be added as a coinventor. Judge Richard Casey
granted Columbia summary judgment that Stern lacked sufficient evidence to prove
co-inventorship. Stern appealed to the Federal Circuit.
The Federal Circuit noted that certain claim elements such as therapeutic use in the absence of tachphylaxis (a complication) were not conceived until after Stern left Columbia, and affirmed. The Federal Circuit repeated its often quoted statement that “[c]onception is defined as ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention…” The court did not reach the issue of how much conception is needed for co-inventorship because acts that occurred before a complete conception were discounted as evidence of coinventorship.
Acromed
Corporation v. Sofamor Danek Group Inc. et al.
Decided June 8, 2001
pdf
Judge Rader with Judges Michel and Linn
Coinventorship requires more than the work of an ordinary skilled artisan
following instructions
Acromed sued Sofamor Danek for infringing Acromed’s patents claims
that recite a plate and screw system for stiffening vertebrae by tapping into
them. During development of the invention the inventor requested Janson, a
machinist, to modify pin screws that attach to bone, and to design a plate
aligned with the bones via a pin that can “sink in and stays right there.”
Janson put arcuate recesses into a plate that block the screws from sliding.
Acromed then filed for a patent with claims that recite the arcuate recesses.
After Janson became an employee, Acromed asked Janson to sign a
declaration/power of attorney to add him as a named co-inventor of the
application and for a formal assignment of his rights to Acromed. Janson
refused and shortly thereafter signed an agreement with Danek to assign his
“patent rights” for $150,000. Later when Acromed sued Danek for infringement,
Janson’s possible inventorship of the patent played a major role in Sofamor
Danek’s defense of invalidity for improper inventorship.
The U.S. District Court for the Northern District of Ohio, Senior Judge Ann Aldrich granted judgment as a matter of law that the Acromed patent is not invalid for improper inventorship because Danek provided insufficient evidence of inventorship. The CAFC affirmed, in a decision that carefully reviewed the claim elements of the affected patent and Janson’s contribution to the invention. The CAFC began its analysis of Janson’s contribution by restating that “conception is the touchstone of inventorship” but explained that “[b]eyond conception, a purported inventor must show that he made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and [did] more then merely explain to the real inventors well-known concepts and/or the current state of the art” (citing Pannu v. Iolab Corp, 1998). In this case Janson provided no corroboration for his assertion that he conceived the entire plate and screw combination. His corroborated work of “[c]ountersinking the slots in the spine plate, however, was not an inventive conception.” Thus, the CAFC agreed with the district court that Janson’s work was not “more than the work of an ordinary skilled machinist following instructions.”
It is often difficult to determine coinventorship when an assistant’s contribution to a project is translated into claim language as in the case here. The CAFC indicated that an inventive principle must be found in the contribution for that contribution to rise to the level of coinventorship. The court pointed out in this regard that “[v]irtually all inventions are combinations and virtually all are combinations of old elements” and that “[T]he entire combination, ……. renders (the claim) patentable.”
Jaswant Pannu
et al. v. Iolab Corporation
Decided August 6, 1998
pdf
Judge Lourie with Judges Mayer and Rader
Innocent, incorrect inventorship is easily corrected under USC 256.
Following a successful jury trial at the U.S. District Court for the Southern District of Florida, patentee Pannu persuaded Judge Ferguson Jr. for judgment as a matter of law that Iolab could not prove that Pannu’s patent could be invalidated for incorrect inventorship. Iolab appealed to the Federal Circuit.
The Federal Circuit vacated the jury judgment of infringement and remanded, while noting that the patent might be invalidated on 102(f) grounds in an opinion that reviewed correction of patents,. The court explained that “A patentee may invoke section 256 to save the patent from invalidity….. Nonjoinder may be corrected ‘on notice and hearing of all parties concerned’ and upon a showing that the error occurred without any deceptive intent on the part of the unnamed inventor. 35 U.S.C. § 256; see Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1555, 43 USPQ2d 1321, 1324 (Fed. Cir. 1997)”
Many patents likely have named incorrect inventors. Correction of such errors is easy, usually. Sometimes, however, this fact provides a basis of patent death during litigation.
Ethicon, Inc. et al. v. U.S. Surgical Corporation et al.
Decided February 3, 1998
pdf
Judge Rader with Judges Newman and Skelton
Co-inventorship is determined on a claim by claim basis and “[a] contribution to one claim is enough”
Ethicon sued Surgical at the U.S. District Court for the District of Connecticut. Surgical brought in an unacknowledged coinventor, who had given Surgical a license. Judge Chatigny agreed that the new person was a co-inventor and dismissed the suit because a co-inventor of two claims did not consent to the lawsuit. Ethicon appealed.
The Federal Circuit affirmed. In reviewing the corroborated evidence of conception, the court pointed out that the unnamed inventor had co-conceived smaller aspects of embodiments within the larger concept of the named inventor. However, the patentee could not prove that the unnamed inventor’s “contribution was simply a reduction to practice of the broader concept” and thus affirmed the district court’s decision of co-inventorship.
A patent drafter should evaluate and record the co-inventors of each claim in a filed patent application. This is becoming more important as litigators use 102(f) and improper inventorship more often to destroy patents.
Checkpoint
Systems, Inc., v. All-Tag Security S.A. et. al.
Decided June 20, 2005
Judge Schall with Judges Michel and Dyk
The “rule of reason standard requiring corroborating evidence extends to
claims by individuals purporting to be co-inventors.”
Checkpoint sued All-Tag at the U.S. District Court for the Eastern
District of Pennsylvania for allegedly infringing claims to deactivatable labels
used in the retail industry. The claims were to an invention by Jorgensen, who
worked with Pichl. Pichl left the company and formed All-Tag, the defendant,
after the patent issued. In defense of infringement, All-Tag submitted a
declaration by Pichel and Jorgensen that they purposely had omitted Pichl as a
coinventor of the patented invention years earlier because of a contract based
concern. This prompted. Judge Petrese Tucker to granted All-Tag summary
judgment of invalidity based on 35 USC 102(f) (inventorship by another).
Checkpoint appealed to the Federal Circuit.
The Federal Circuit reversed because Jorgensen’s declaration of sole
inventorship to the PTO contradicted his later declaration made during
litigation. This presented a genuine issue of material fact, precluding summary
judgment. The court explained that the “rule of reason standard corroborating
evidence extends to claims by individuals purporting to be co-inventors.”
Invalidity on 35 USC 102(f) grounds often presents an unappreciated opportunity during litigation to take advantage of inventorship complexities, particularly where co-inventors work for a different company, and therefore the invention is, at least in part, “by another.”
Joany Chou v.
The University of Chicago et al.
Decided July 3, 2001
Judge Lourie with Judges Mayer and Bryson
A putative inventor who lacks potential ownership in a patent nonetheless may sue to correct inventorship
Chou, a former graduate student at the University of Chicago claimed that she should have been named as a coinventor of certain patent applications and sued her former professor and her University at the District Court for the Northern District of Illinois. Judge James B Zagel held that “Chou lacked standing to seek correction of inventorship under 256 because she could claim no ownership of the patents” as her employment agreement with the University “surrendered all her rights to the University.” The court also “determined that (the professor) had no duty as Chou’s advisor and department chairman to inform Chou of the status of the patent applications.” Chou appealed.
The CAFC disagreed with the District Court and held that Chou had standing to sue based on a “concrete financial interest…. albeit an interest less than ownership” arising, among other things, from the University policy of sharing royalty with inventors. The appeal court pointed out that the putative inventor has the right to sue not only “for her own benefit’ but also “in the public interest of assuring correct inventorship designations on patents” and noted that being named as inventor also brought financial benefits.
In the appeal, Chou presented other legal arguments that had been dismissed by the district court. One argument was the notion of fidiciary duty by the professor. The CAFC found that “Chou has adequately pleaded the existence of circumstances that place on (the professor) a fiduciary duty…….and pleaded that (the professor) breached that duty by naming himself as an inventor of her discoveries.” Thus, the CAFC reversed the dismissal and ordered the lower court to investigate charges of breach of fiduciary duty and fraudulent concealment by the professor to his student.
This case reflects the changing priorities of U.S. universities that profit from work performed by graduate students but which must follow the same laws that govern others who commercially exploit technology.