United States: Strong Evidence Leads To Correction Of Inventorship On Issued Patent

Holding

In Blue Gentian, LLC v. Tristar Prods. Inc., No. 21-2316, 21-2317 (Fed. Cir. June 9, 2023), the Court of Appeals for the Federal Circuit ("the Federal Circuit") affirmed a decision of the District Court of New Jersey ordering a correction of inventorship on six asserted patents under 35 U.S.C. §256.

Background

Blue Gentian sued Tristar for infringement of U.S. Patent Nos. 8,291,941 ("the '941 patent"), 8,291,942 ("the '942 patent"), 8,479,776 ("the '776 patent"), 8,757,213 ("the '213 patent"), D722,681 ("the '681 design patent"), and D724,186 ("the '186 design patent"). Michael Berardi was the sole named inventor on each. Id. at *2. Tristar counterclaimed to correct inventorship, arguing that a Gary Ragner, a nonparty, should have been named as a co-inventor. Id. at *2.

Claim 1 of the '941 patent, exemplary of the utility patent claims, reads:

1. A hose comprising:

a flexible elongated outer tube constructed from a fabric material having a first end and a second end, an interior of said outer tube being substantially hollow;

a flexible elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow, said inner tube being formed of an elastic material;

a first coupler secured to said first end of said inner and said outer tubes;

a second coupler secured to said second end of said inner and said outer tubes with the inner and outer tubes unsecured to each other between first and second ends; . . .

Id. at *3-4 (emphasis in original).

In 2011, Ragner, Berardi, and several others met to discuss investing in an expandable hose product. Id. at *5. Ragner, with a background in physics and engineering, had previously designed many expandable hoses and was a named co-inventor on patents relating to expandable hoses. Id. Berardi, with a social science background, had no previous experience in designing hoses. Id. Berardi, however, testified that he watched a video demonstrating a MicroHose product and developed the idea for an expandable hose before the meeting. Id. at *6.

At the meeting, and according to others at the meeting, a prototype and manufacturing documents were shared. Id. at *6.

After the meeting, Berardi built his own prototype, and filed a patent application in November 2011. This application issued as the '941 patent listing Berardi as the sole inventor. Id.

District Court

Regarding contribution to conception, the district court found evidence supported that Ragner conveyed the following elements of the hose to Berardi:

1. inner and outer tubes attached only at the ends,
2. a fabric outer tube, and
3. an elastic inner tube that can provide force to retract the hose without a metal spring.

This "amounted to a significant contribution 'to the conception of at least one claim in each of the six asserted Berardi patents.'" Id. at *10 (quoting the District Court's Inventorship Order).

The district court rejected Blue Gentian's argument that the claims should have been construed prior to determining inventorship because Blue Gentian had not raised any dispute about claim scope. Id. at *10-11. "[T]he court is not required to prospectively address hypothetical claim construction disputes." Id. at *11.

Federal Circuit

The Federal Circuit affirmed all the district court's determinations.

The court found no support for Blue Gentian's argument that claim construction was a prerequisite to an inventorship hearing and "Blue Gentian did not otherwise present a material dispute about claim meaning." Id. at *11. The Federal Circuit concluded that the district court did not err by making its inventorship determination without engaging in claim construction. Id.

Moreover, "[t]he district court properly determined that the three key elements were a significant contribution to the conception of at least one claim of each asserted patent." Id. at *11-12. The three components contributed by Ragner "were reflected in the utility patents' claim language." Id. at *12. They were also the components that provided the basis for distinguishing the prior art during prosecution and at district court. Id. at *13, *14. The Federal Circuit agreed with the district court that the "three-element contribution" applied to the design patents also. Id. at *15.

The Federal Circuit rejected Blue Gentian's arguments attacking Ragner's contributions as already in the prior art because the arguments focused on the "contributed elements" individually. Id. at *16. The Federal Circuit explained:

Id. at *16-17.

The Federal Circuit also rejected Blue Gentian's arguments that Berardi conceived of the invention prior to the August 2011 meeting:

Id. at *17.

Blue Gentian's attacks on the district court's fact findings about what was disclosed at the August 2011 meeting were rejected because they were not shown to be clearly erroneous. Id. The Federal Circuit found Ragner's testimony sufficiently corroborated by physical (prototypes) and circumstantial evidence. Id. at *19. "The district court properly engaged in a rule-of-reason analysis aimed at determining whether Mr. Ragner's story was credible overall." Id. The court looked at what Ragner knew going into the August 2011 meeting and what he conveyed to Berardi at that meeting. "Considering the evidence as a whole, Blue Gentian has not demonstrated clear error." Id. at *21.

Finally, the Federal Circuit concluded that there was sufficient collaboration between Ragner and Berardi for co-inventorship:

Here, the August 2011 meeting involved the requisite 'element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting.' Id. Mr. Ragner showed Mr. Berardi confidential information about hoses he had designed, discussed technical details about how he planned to manufacture his hose, and discussed alternative ways to build an expandable hose. Mr. Berardi built off of those contributions and immediately began building prototypes of the expandable hose eventually claimed in the asserted patents.

Take Aways

Ideally, all issues of inventorship are resolved before or during application drafting. This typically requires identifying everyone who worked on the project and determining the extent of their contribution. Inventorship also has ownership implications because in the U.S., the inventor is the first owner of a patent. According to 35 U.S.C. §262, co-owners of a U.S. patent may make, use, offer to sell, and sell the patented invention without regard to the wishes of any other co-owner. See Falana v. Kent State University, 669 F.3d 1349 (Fed. Cir. 2012); Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir.1998). Ownership may have standing implications for enforcing the patent. See James v. J2 Cloud Services, LLC, 887 F.3d 1368 (Fed. Cir. 2018); Diamond Coating Technologies, LLC v. Hyundai Motor America, 823 F.3d 615 (Fed. Cir. 2016).

Inventorship on issued patents is presumed to be correct, and a challenger alleging mis-joinder or non-joinder must prove its case by "clear and convincing evidence" and provide corroborating evidence. Symantec Corp. v. Computer Associates Int'l, Inc., 522 F.3d 1279, 1295 (Fed. Cir. 2008). An alleged joint inventor must show that he contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371 (Fed. Cir. 2020).

This case is a good example of how strong physical and circumstantial evidence can meet that burden. It serves as a reminder to document meetings and conversations. In this case, not only did it absolve Ragner of the infringement allegations, but also it meant he was added as co-inventor (and therefore owner) of the patents.

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