This question was handled by United States Court of Appeals for
the Federal Circuit in the case of VAPOR POINT LLC, KEITH NATHAN,
KENNETH MATHESON, Plaintiffs-Cross-Appellants DON ALFORD, JEFFEREY
ST. AMANT, Counterclaim Defendants-Cross-Appellants v. ELLIOTT
MOORHEAD, NANOVAPOR FUELS GROUP, INC., BRYANT HICKMAN,
Defendants-Appellants, decided on August 10, 2016.
Vapor Point, L.L.C., Keith Nathan ("Nathan"), and
Kenneth Matheson ("Matheson") (collectively "Vapor
Point") had sued Elliott Moorhead ("Moorhead"),
NanoVapor Fuels Group, Inc., and Bryant Hickman
("Hickman") (collectively "NanoVapor") in the
United States District Court for the Southern District of Texas,
seeking to have Nathan and Matheson recognized as joint inventors
under 35 U.S.C. § 256 on NanoVapor's U.S. Patent Nos.
7,727,310 ("the '310 patent") and 8,500,862
("the '862 patent"). NanoVapor responded by suing
Vapor Point, seeking to have Moorhead recognized as a joint
inventor under 35 U.S.C. § 256 on Vapor Point's U.S.
Patent Nos.7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763
and for declaratory relief regarding inventorship of
NanoVapor's '310 and '862 patents. After a four-day
evidentiary hearing, the district court issued an order granting
Vapor Point's motion for correction of inventorship and denying
each of NanoVapor's motions. Vapor Point moved for exceptional
case status and attorneys' fees. The district court issued a
final judgment correcting inventorship, dismissing the action with
prejudice, and denying Vapor Point's motion for exceptional
case status and attorneys' fees. NanoVapor appealed the
district court's order on inventorship and its dismissal of the
case. Vapor Point crossappealed the same order to the extent it
holds that the case is not exceptional and that an award of
attorneys' fees is not warranted.
The patents-in-suit are generally directed "to the removal
of volatile fuel vapors, also known as volatile organic compounds
('VOCs'), from storage tanks and other holding vessels,
generally in the oil and gas industry.
"NanoVapor is an industry leader in the field of [VOC]
containment, including a process called Vapor Suppression System
developed by Moorhead that aims to control or eliminate combustible
and toxic gases in fuel storage and transfer operations. After
working with Moorhead to help market this technology, Nathan became
Chief Operating Officer of NanoVapor in 2007. NanoVapor later hired
Matheson to help with the "commercial embodiment" of the
technology being developed.
Consistent with § 256, the district court held a four-day
evidentiary hearing to determine inventorship of the
patents-in-suit. After the hearing, the district court issued an
order denying NanoVapor's claims of inventorship and granting
Vapor Point's to the extent Nathan and Matheson sought to be
added to the '310 and '862 patents as additional inventors.
In that decision, the district court addressed the "four key
concepts in the '310 and '862 patents": (1) using
biodiesel as a vapor capture medium; (2) removing VOCs from a
vessel containing fuel vapors and introducing them into a vapor
capture medium (such as biodiesel); (3) using a particulatizer to
create micro-sized VOC particles for treatment; and (4) using
diffusion plates to distribute micro-sized particles across the
vapor capture medium. The district court found that Nathan
contributed to the conception of the first three of these four key
concepts and that Matheson contributed to the third and fourth
concepts. The district court denied NanoVapor's claim that
Moorhead should be a named inventor on Vapor Point's patents.
Because NanoVapor did not join Nathan and Matheson—now deemed
to be two of the inventors of the patents-in-suit—in the
infringement claims against Vapor Point, Vapor Point argued that
NanoVapor "did not have standing to pursue [its] claim for
infringement of the '310 patent, eliminating any claim against
Federal circuit found that the district court did not err in
dismissing the case after determining inventorship. Federal circuit
further found that the district court did not abuse its discretion
in denying Vapor Point's motion for exceptional case status and
attorneys' fees. Therefore, federal circuit affirmed the
decision by holding that all inventors, even those who contribute
to only one claim or one aspect of one claim of a patent, must be
listed on that patent. A co-inventor does not need make a
contribution to every claim of a patent. A contribution to one
claim is enough.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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