Properly Name Inventors on Patents

The question of inventorship, which is sometimes not thoroughly vetted during patent prosecution, can be of paramount importance in patent litigation. A patent can be held invalid for incorrect inventorship, and co-inventorship of one, even relatively insignificant, claim can entitle a co-inventor to an ownership stake in every claim of the patent. Moreover, failure to join all co-inventors/owners as plaintiffs can prevent the real party in interest from enforcing a patent. A recent decision by the Court of Appeals for the Federal Circuit (“Federal Circuit”), Nartron Corp. v. Schukra U.S.A., Inc., 558 F.3d 1352 (Fed. Cir. 2009), is illustrative of such risks and is analyzed below.

Background

The law concerning when and how two or more inventors may proceed to apply for a patent jointly is set forth in 35 U.S.C. ' 116. In order to meet the requirements of the statute, joint inventorship can only arise when collaboration or concerted effort occurs ' that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts. Eli Lilly and Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004). Accordingly, an alleged joint
inventor seeking to be listed on a patent must demonstrate that his or her labors were conjoined with the efforts of the named inventors.

Inventorship is determined on a claim-by-claim basis and requires the construction of each disputed claim. A comparison is then made of the alleged contributions of each asserted co-inventor with the subject matter of the correctly construed claim to determine whether the correct inventors were named. Gemstar-TV Guide International v. International Trade Commission, 383 F.3d 1352, 1381-82 (Fed. Cir. 2004). According to the Federal Circuit, “[t]o be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Caterpillar Inc. v. Sturman Indus., Inc., 2004 WL 2406597 (Fed. Cir. Oct. 28, 2004).

The consequences of improperly naming or omitting inventors can be severe. A patent can be held invalid if more or fewer than the true inventors are named. Gemstar-TV Guide International, Inc., 383 F.3d at 1381. Even when inventors are properly named, co-inventorship of one, even relatively insignificant, claim could entitle the co-inventor to pro rata ownership of every claim of the patent. Ethicon v. United States Surgical Corp., 135 F.3d 1456, 1465-66 (Fed. Cir. 1998) (“[35 U.S.C. '' 261, 262] presents the prospect that a co-inventor of only one claim might gain entitlement to ownership of a patent with dozens of claims.”). Since an action for patent infringement must generally join all co-owners as plaintiffs, failure to join all co-inventors/owners as plaintiffs can prevent the real party in interest from enforcing a patent. Id. at 1467 (citing Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)).

Nartron Corp. v. Schukra U.S.A., Inc.

The patentee in Nartron v. Schukra found itself in the awkward position of arguing that the sole limitation of claim 11 of its asserted patent was “insignificant,” devoting substantial effort and resources in order for the Federal Circuit ultimately to conclude that “including [this limitation] as part of the claimed invention was merely the basic exercise of ordinary skill in the art.” Inventorship questions concerning Nartron's patent, based on the inventive contribution of one of Nartron's customer's employees, would ultimately endanger and complicate enforcement efforts against one of Nartron's competitors years later. While Nartron was ultimately successful in convincing the Federal Circuit that all inventors were Nartron employees, it was a dubious beginning to its lawsuit, and could have been avoided with more careful attention to the implications of co-inventorship and an awareness of situations in which co-inventorship issues can arise.

Nartron found itself the subject of an inventorship dispute because the apparent sole-contributor ' and alleged co-inventor ' of claim 11 of Nartron's patent worked for one of Nartron's customers, Schukra U.S.A. Nartron Corp., 558 F.3d at 1354-55. Even though claim 11 was not asserted against the alleged infringer, the patentee could not proceed with its action until it could assure the court that all co-owners (and hence all co-inventors) had been named as necessary parties. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *2 (E.D. Mich. Mar. 31, 2008).

Schukra U.S.A. had contracted with Nartron in 1996 to design a control system that would provide its existing automobile seats with massage functionality. Nartron was entrusted with developing the control system, while it appeared that Schukra exclusively provided input about the seats themselves. A patent application was filed, and eventually issued with the following claim:

11. The invention as defined in claim 6 wherein said lumbar support adjustor includes an extender.

As Schukra's expertise and apparent area of control was the automobile seats, it would later be admitted that the Nartron-listed inventors did not invent including an extender on the lumbar support adjustor. Nartron Corp., 558 F.3d at 1355. This design feature, without the control system functionality recited in preceding claims from which claim 11 depends, was in the prior art. Id.

The district court held that the Schukra employee was a co-inventor and dismissed the infringement action for failure to join a co-owner. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *12. The Federal Circuit reversed. Relying on existing case law that states that “a joint inventor must contribute in some significant manner to the conception or reduction of practice of the invention,” the Federal Circuit held that the contribution of an extender to the lumbar support adjustor was “insignificant” and “merely the basic exercise of ordinary skill in the art.” Nartron Corp., 558 F.3d at 1357-58. Accordingly, the Federal Circuit held that the Schukra employee was not a co-inventor, and need not be joined. The case was allowed to proceed, and remanded back to the district court. Id. at 1359.

Practical Considerations in View of Nartron

Nartron instructs of the importance of inventorship, and the dire consequences that could result from not naming unaffiliated inventors when they have contributed to the conception of the invention. As was likely the case in Nartron, an unintended co-inventor may be contractually bound to assign his or her rights to an employer, who in turn may be a competitor to the assignee responsible for the lions' share of the claims.

The failure to join all co-inventors/co-owners as plaintiffs can prevent the real party in interest from enforcing its patent. As shown in Nartron, this may be the case even if claims partially owned by third parties are not asserted. Infringement actions have been dismissed when a party seeking to enforce a patent is unwilling, or unable, to join all of the co-owners/co-inventors. The ability of co-inventors to present themselves and devalue a patent right cannot be overstated.

Furthermore, inventorship surprises can place the assignee in unappealing litigation positions, as it is undesirable to be required to denigrate the contribution of a third party when their embodiments find their way into the patent's claims. As noted by the Federal Circuit in Nartron, “[t]here is no, and could not be, any claim that the addition of the extender here was anything but obvious.” Thus, it would appear that the sole limitation of claim 11, i.e., the inclusion of an extender to a lumbar support adjustor, does not provide an additional patentable distinction over the prior art, as compared to claims from which it depends. Nartron Corp., 558 F.3d at 1358. As noted by the district court, Nartron's argument (which apparently prevailed upon appeal) rendered claim 11 meaningless. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *10.

Could the defendant rightfully ask what other limitations in Nartron's patent are meaningless, and “insignificant”? In hindsight, it is doubtful that Nartron would have bothered prosecuting such a claim that, essentially, adds no patentable weight to the existing claims of the patent. The patentees were apparently hamstrung by the later discovery that the sole feature of claim 11 was provided by the assignee's customer, not affiliated with the Nartron employee-inventors.

Thus when drafting claims, particularly dependent claims to further refinements of the invention more broadly claimed in independent claims, it is important to consider the possible contribution of outside entities. Can someone not contractually bound to assign his rights to your client present a claim to inventorship? Care should be exercised to avoid, when possible, claiming embodiments that were conceived by employees or personnel otherwise not contractually bound to the intended assignee. This is particularly the case when those embodiments are a relatively insignificant contribution to the art, or of minor commercial significance.

For example, hindsight suggests that in Nartron, only those portions which the patentee was engaged to develop (i.e., the control system) should have been claimed, not aspects of the project suggested by, and/or under the substantial control of a customer or outside entity (i.e., the seat apparatus itself). Carefully memorializing the areas of responsibility for future joint ventures may prove helpful later when determining inventorship of various claims, and possibly later in defending outside claims of inventorship/ownership. It can also serve as a bright-line tool to guide the attorney drafting the claims of the patent application resulting from the project.

Other steps that can be taken include minimizing informal interaction between inventors employed by your client and colleagues not involved or affiliated with your client. In addition to confidentiality concerns, such informal interactions and discussions could provide the impetus for a third-party ownership claim to the entire patent, even when the contribution at issue relates only to a minor aspect of the overall project.

Sometimes, however, participants in joint ventures are closely related, and it can be impossible to delineate clearly the respective areas of responsibility, or counterproductive to prevent interaction amongst the parties. In such cases, applications should be drafted and the inventorship of each claim carefully determined, preferably by an impartial third party. Once inventorship of the individual claims is determined, it may be possible split the claims such that inventorship for each application will provide for only one owner. This would, among other advantages, simplify a determination of who controls prosecution of the application, and also obviates the need to join third parties when seeking to enforce the patent right against competitors.

Conclusion

Cognizance of the perils of co-inventorship can avoid needless hassles or, worse yet, absolute impediments in enforcing patent rights. In the context of joint ventures, careful claiming and an impartial inventorship review may be just as important as the claims themselves. As Nartron instructs, it is important that such details be considered for all claims, particularly dependent claims, to narrow embodiments that are tangentially related to the actual inventive contribution to the art.

Paul A. Ragusa, a member of this newsletter's Board of Editors, is a member and Jason Chumney is an associate in the New York office of Baker Botts LLP, where they practice intellectual property law with an emphasis on patent litigation, prosecution, and counseling.

The question of inventorship, which is sometimes not thoroughly vetted during patent prosecution, can be of paramount importance in patent litigation. A patent can be held invalid for incorrect inventorship, and co-inventorship of one, even relatively insignificant, claim can entitle a co-inventor to an ownership stake in every claim of the patent. Moreover, failure to join all co-inventors/owners as plaintiffs can prevent the real party in interest from enforcing a patent. A recent decision by the Court of Appeals for the Federal Circuit (“Federal Circuit”), Nartron Corp. v. Schukra U.S.A., Inc. , 558 F.3d 1352 (Fed. Cir. 2009), is illustrative of such risks and is analyzed below.

Background

The law concerning when and how two or more inventors may proceed to apply for a patent jointly is set forth in 35 U.S.C. ' 116. In order to meet the requirements of the statute, joint inventorship can only arise when collaboration or concerted effort occurs ' that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts. Eli Lilly and Co. v. Aradigm Corp. , 376 F.3d 1352, 1359 (Fed. Cir. 2004). Accordingly, an alleged joint
inventor seeking to be listed on a patent must demonstrate that his or her labors were conjoined with the efforts of the named inventors.

Inventorship is determined on a claim-by-claim basis and requires the construction of each disputed claim. A comparison is then made of the alleged contributions of each asserted co-inventor with the subject matter of the correctly construed claim to determine whether the correct inventors were named. Gemstar-TV Guide International v. International Trade Commission , 383 F.3d 1352, 1381-82 (Fed. Cir. 2004). According to the Federal Circuit, “[t]o be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Caterpillar Inc. v. Sturman Indus., Inc., 2004 WL 2406597 (Fed. Cir. Oct. 28, 2004).

The consequences of improperly naming or omitting inventors can be severe. A patent can be held invalid if more or fewer than the true inventors are named. Gemstar-TV Guide International, Inc., 383 F.3d at 1381. Even when inventors are properly named, co-inventorship of one, even relatively insignificant, claim could entitle the co-inventor to pro rata ownership of every claim of the patent. Ethicon v. United States Surgical Corp. , 135 F.3d 1456, 1465-66 (Fed. Cir. 1998) (“[35 U.S.C. '' 261, 262] presents the prospect that a co-inventor of only one claim might gain entitlement to ownership of a patent with dozens of claims.”). Since an action for patent infringement must generally join all co-owners as plaintiffs, failure to join all co-inventors/owners as plaintiffs can prevent the real party in interest from enforcing a patent. Id. at 1467 (citing Waterman v. Mackenzie , 138 U.S. 252, 255 (1891)).

Nartron Corp. v. Schukra U.S.A., Inc.

The patentee in Nartron v. Schukra found itself in the awkward position of arguing that the sole limitation of claim 11 of its asserted patent was “insignificant,” devoting substantial effort and resources in order for the Federal Circuit ultimately to conclude that “including [this limitation] as part of the claimed invention was merely the basic exercise of ordinary skill in the art.” Inventorship questions concerning Nartron's patent, based on the inventive contribution of one of Nartron's customer's employees, would ultimately endanger and complicate enforcement efforts against one of Nartron's competitors years later. While Nartron was ultimately successful in convincing the Federal Circuit that all inventors were Nartron employees, it was a dubious beginning to its lawsuit, and could have been avoided with more careful attention to the implications of co-inventorship and an awareness of situations in which co-inventorship issues can arise.

Nartron found itself the subject of an inventorship dispute because the apparent sole-contributor ' and alleged co-inventor ' of claim 11 of Nartron's patent worked for one of Nartron's customers, Schukra U.S.A. Nartron Corp., 558 F.3d at 1354-55. Even though claim 11 was not asserted against the alleged infringer, the patentee could not proceed with its action until it could assure the court that all co-owners (and hence all co-inventors) had been named as necessary parties. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *2 (E.D. Mich. Mar. 31, 2008).

Schukra U.S.A. had contracted with Nartron in 1996 to design a control system that would provide its existing automobile seats with massage functionality. Nartron was entrusted with developing the control system, while it appeared that Schukra exclusively provided input about the seats themselves. A patent application was filed, and eventually issued with the following claim:

11. The invention as defined in claim 6 wherein said lumbar support adjustor includes an extender.

As Schukra's expertise and apparent area of control was the automobile seats, it would later be admitted that the Nartron-listed inventors did not invent including an extender on the lumbar support adjustor. Nartron Corp., 558 F.3d at 1355. This design feature, without the control system functionality recited in preceding claims from which claim 11 depends, was in the prior art. Id.

The district court held that the Schukra employee was a co-inventor and dismissed the infringement action for failure to join a co-owner. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *12. The Federal Circuit reversed. Relying on existing case law that states that “a joint inventor must contribute in some significant manner to the conception or reduction of practice of the invention,” the Federal Circuit held that the contribution of an extender to the lumbar support adjustor was “insignificant” and “merely the basic exercise of ordinary skill in the art.” Nartron Corp., 558 F.3d at 1357-58. Accordingly, the Federal Circuit held that the Schukra employee was not a co-inventor, and need not be joined. The case was allowed to proceed, and remanded back to the district court. Id. at 1359.

Practical Considerations in View of Nartron

Nartron instructs of the importance of inventorship, and the dire consequences that could result from not naming unaffiliated inventors when they have contributed to the conception of the invention. As was likely the case in Nartron, an unintended co-inventor may be contractually bound to assign his or her rights to an employer, who in turn may be a competitor to the assignee responsible for the lions' share of the claims.

The failure to join all co-inventors/co-owners as plaintiffs can prevent the real party in interest from enforcing its patent. As shown in Nartron, this may be the case even if claims partially owned by third parties are not asserted. Infringement actions have been dismissed when a party seeking to enforce a patent is unwilling, or unable, to join all of the co-owners/co-inventors. The ability of co-inventors to present themselves and devalue a patent right cannot be overstated.

Furthermore, inventorship surprises can place the assignee in unappealing litigation positions, as it is undesirable to be required to denigrate the contribution of a third party when their embodiments find their way into the patent's claims. As noted by the Federal Circuit in Nartron, “[t]here is no, and could not be, any claim that the addition of the extender here was anything but obvious.” Thus, it would appear that the sole limitation of claim 11, i.e., the inclusion of an extender to a lumbar support adjustor, does not provide an additional patentable distinction over the prior art, as compared to claims from which it depends. Nartron Corp., 558 F.3d at 1358. As noted by the district court, Nartron's argument (which apparently prevailed upon appeal) rendered claim 11 meaningless. Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060, at *10.

Could the defendant rightfully ask what other limitations in Nartron's patent are meaningless, and “insignificant”? In hindsight, it is doubtful that Nartron would have bothered prosecuting such a claim that, essentially, adds no patentable weight to the existing claims of the patent. The patentees were apparently hamstrung by the later discovery that the sole feature of claim 11 was provided by the assignee's customer, not affiliated with the Nartron employee-inventors.

Thus when drafting claims, particularly dependent claims to further refinements of the invention more broadly claimed in independent claims, it is important to consider the possible contribution of outside entities. Can someone not contractually bound to assign his rights to your client present a claim to inventorship? Care should be exercised to avoid, when possible, claiming embodiments that were conceived by employees or personnel otherwise not contractually bound to the intended assignee. This is particularly the case when those embodiments are a relatively insignificant contribution to the art, or of minor commercial significance.

For example, hindsight suggests that in Nartron, only those portions which the patentee was engaged to develop (i.e., the control system) should have been claimed, not aspects of the project suggested by, and/or under the substantial control of a customer or outside entity (i.e., the seat apparatus itself). Carefully memorializing the areas of responsibility for future joint ventures may prove helpful later when determining inventorship of various claims, and possibly later in defending outside claims of inventorship/ownership. It can also serve as a bright-line tool to guide the attorney drafting the claims of the patent application resulting from the project.

Other steps that can be taken include minimizing informal interaction between inventors employed by your client and colleagues not involved or affiliated with your client. In addition to confidentiality concerns, such informal interactions and discussions could provide the impetus for a third-party ownership claim to the entire patent, even when the contribution at issue relates only to a minor aspect of the overall project.

Sometimes, however, participants in joint ventures are closely related, and it can be impossible to delineate clearly the respective areas of responsibility, or counterproductive to prevent interaction amongst the parties. In such cases, applications should be drafted and the inventorship of each claim carefully determined, preferably by an impartial third party. Once inventorship of the individual claims is determined, it may be possible split the claims such that inventorship for each application will provide for only one owner. This would, among other advantages, simplify a determination of who controls prosecution of the application, and also obviates the need to join third parties when seeking to enforce the patent right against competitors.

Conclusion

Cognizance of the perils of co-inventorship can avoid needless hassles or, worse yet, absolute impediments in enforcing patent rights. In the context of joint ventures, careful claiming and an impartial inventorship review may be just as important as the claims themselves. As Nartron instructs, it is important that such details be considered for all claims, particularly dependent claims, to narrow embodiments that are tangentially related to the actual inventive contribution to the art.

Paul A. Ragusa, a member of this newsletter's Board of Editors, is a member and Jason Chumney is an associate in the New York office of Baker Botts LLP, where they practice intellectual property law with an emphasis on patent litigation, prosecution, and counseling.