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Whose idea was this? Determination of patent inventorship issue requires trial
Cantor Colburn June/July 2023 IP Newsletter
In patent law, the line between actual contributions to an invention and “more prosaic” contributions to the process can be difficult to draw. A recent ruling from the U.S. Court of Appeals for the Federal Circuit drives this home.
Bottles do battle
Plastipak Packaging Inc. owns 12 patents related to lightweight plastic bottles and plastic bottle preforms with a neck portion. (Preforms become fully formed bottles during manufacturing.)
The patents are generally directed to two embodiments:
- An X-dimension limitation, referring to the distance from the support flange to the top of the neck, and
- The discontinuous tamper-evident formation (TEF) limitation, which shows the bottle has been opened.
Seven of the patents have an X-dimension limitation in the claims; the other five include a discontinuous TEF limitation in the claims.
Each patent lists Richard Darr and Edward Morgan as inventors. When Plastipak sued Premium Waters Inc. for infringement, Premium Waters contended that the patents were invalid because they didn’t name a third co-inventor, Alessandro Falzoni, who allegedly contributed to the two limitations.
The trial court agreed with Premium Waters and granted its motion for summary judgment, dismissing the case without trial. Plastipak appealed.
Federal Circuit provides a refresher
Summary judgment is proper only if the party requesting it shows there’s no genuine dispute about any material fact. A genuine factual dispute exists if the evidence is such that a reasonable jury could find in favor of the opposing party. A factual dispute is material if, based on the underlying law, it’s related to what a party must provide to prevail in its claim.
Importantly, a court assessing a motion for summary judgment considers all facts and draws all reasonable inferences in the light most favorable to the nonmoving party.
Because the application for the patents at issue was filed before March 16, 2013 — the date the Leahy-Smith America Invents Act (AIA) “first to file” provision took effect — pre-AIA law applied. Under pre-AIA law, a person isn’t entitled to a patent if the person didn’t invent the invention himself.
To be a joint inventor, the person must:
- Contribute in a significant manner to the conception or reduction to practice (that is, the actual development) of the invention,
- Make a contribution to the invention that isn’t insignificant in quality when measured against the full invention, and
- Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
If those criteria are satisfied, and the patent doesn’t name the joint inventor, that patent may be invalid.
But a party seeking to invalidate a patent using summary judgment must submit such “clear and convincing evidence of the facts underlying invalidity that no reasonable jury could find otherwise.” And, when alleging invalidity based on joint inventorship, alleged joint inventors must prove their contributions with more than their own testimony.
Court pours over the evidence
The Federal Circuit ended up reversing the trial court. It found that Premium Waters failed to present evidence from which all reasonable factfinders would have to conclude that Falzoni contributed to either limitation.
Considering the inventorship of the TEF limitations, the court found that Plastipak submitted sufficient evidence — for example, prior patents that could be read as disclosing a discontinuous TEF and Falzoni’s deposition testimony — for a factfinder to reasonably conclude such a TEF was well known and the state of the art. A trial was therefore necessary to determine whether his contribution was merely the state of the art, disqualifying him from joint inventorship.
As for the X dimension, the Federal Circuit agreed that Premium Waters presented sufficient evidence on which a reasonable factfinder might find that Falzoni was an inventor. But, at the summary judgment stage, the evidence must compel all reasonable factfinders to that conclusion. This high standard, the court found, wasn’t met.
The capper
As this case makes clear, determining inventorship is often “bound up with material fact disputes,” making summary judgment often inappropriate. To avoid unnecessary complications, patent applicants should determine from the outset who’s involved in the invention.
Sidebar: Overwhelming evidence not enough for summary judgment
Summary judgment is proper only if the party requesting it shows there’s no genuine dispute about any material fact. The U.S. Court of Appeals for the Federal Circuit in the Plastipak case (see main article) conceded that the trial court may have been correct in finding that the defendant, Premium Waters, presented an overwhelming amount of evidence that Alessandro Falzoni was a joint inventor in its motion for summary judgment. However, this didn’t mean the plaintiff, Plastipak, presented an insufficient amount of evidence for a reasonable factfinder to find that the patent at issue omitted a joint inventor.
The Federal Circuit also recognized that the trial court may have been understandably skeptical of Plastipak based on conflicting evidence and Plastipak’s failure to timely disclose some unfavorable evidence. But even that evidence didn’t erase Plastipak’s evidence of its alleged independent invention from the record. Ultimately, unless the parties come to an agreement, a trial will be necessary so a jury can weigh all of the competing evidence and draw its own reasonable conclusion on inventorship.
