DC decision requiring correction of inventorship on design and utility patents affirmed

Brief Summary:   DC decision to correct inventorship of disputed utility and design patents affirmed.  

Summary:  Blue Gentian sued Tristar for infringement of US 8,291,941; 8,291,942; 8,479,776; 8,757,213, D722,681 and D724,186 to flexible/expandable hoses, each naming Michael Berardi as the sold inventor, and Tristar counterclaimed to correct inventorship of each of the patents.  The DC ordered correction of the inventorship to add Gary Ragner as a co-inventor on each under 35 USC 256, and Blue Gentian appealed.  The FC panel opinion explains that “a single meeting…is central to the [DC]’s inventorship holding”.  The FC panel explained that “[a]ll inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent” (Vapor Point, FC 2016) and a “party seeking correction of inventorship must show by clear and convincing evidence that a joint inventor should have been listed” (Eli Lilly, FC 2004).  It also explained that “[a]n alleged joint inventor’s testimony standing alone is insufficient to establish inventorship by clear and convincing evidence” (Ethicon, FC 1998), and requires corroborating evidence that is considered under the “rule of reason” standard (Sandt Tech., FC 2001; Dana Farber, FC 2020 (“contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim”); Kimberly-Clark, FC 1992 (“some element of joint behavior”)).  The FC panel first found no error in the DC’s decision to making its inventorship determination without conducting claim construction (GNPE, FC 2016; Simio, FC 2020).  The DC “noted that ‘[i]t was not disputed that each of [the] four asserted utility patents has one or more claims that require at least these three elements’” to which “Mr. Ragner contributed”, and the FC panel agreed (“these three elements, taken together, were a significant contribution to at least one claim of each asserted patent”; FN2:  “the court understood that the inventorship analysis required an assessment of Mr. Ragner’s contribution to the claims”; “these are the very elements Blue Gentian has used to distinguish the invention of the asserted patents from the prior art…necessarily tied to the claims” (Pannu, FC 1998; Hoop, FC 2002 (“same standard of inventorship” for design and utility patents); “once a design is conceived, slight differences in appearance from the original do not amount to a new and separate design conception”).  The FC panel rejected Blue Gentian’s arguments regarding Mr. Ragner’s contribution (e.g., “challenge to the [DC]’s factual findings about what precisely was disclosed at the meeting—not what the claims require”; no clear error in its conclusion of corroboration (distinguishing Price, FC 1993; similar to Davis, CCPA 1980; Falana, FC 2012; Vanderbilt, FC 2010 (“each co-inventor [must] engage with the other co-inventors to contribute to a joint conception”, not independent conception)).  The DC decision was therefore affirmed.