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How not to succeed on a patent inventorship or co-inventorship claim
A person may be accidentally or intentionally omitted from a patent. In one recent case, an alleged inventor sought recognition for his work for a set of computing systems configured to perform computational operations related to cryptocurrency and optimal power pricing. However, he failed to provide the evidence required by the U.S. Court of Appeals for the Federal Circuit, which handles all patent-related appeals.
Power on
Austin Storms designed and built a data mining center in 2017. The center was unprofitable, though, because of the price and levels of electricity required for mining. In 2018, he founded BearBox LLC to design and develop mobile cryptocurrency data centers that take advantage of fluctuating power rates.
Lancium LLC was founded in 2017 to co-locate flexible data centers at wind farms. It would “ramp down” the data centers so the wind farm could sell its power to the electrical grid when energy prices were high and “ramp up” the data centers when power prices were low. Lancium would adjust its power usage based on real-time data on the price of power. Lancium disclosed these concepts in an international patent application in February 2018.
By October 2018, Lancium was operating 120 crypto miners at a Texas facility. Its system monitored some of the information disclosed in the 2018 international patent application to determine when it was profitable to mine Bitcoin. The system eventually evolved into proprietary software that determined a target power level at which miners should operate.
Around this same time, Storms began exploring the idea of a similar system and developed the necessary source code. In May 2019, he met one of Lancium’s co-founders, Michael McNamara, at a conference. They discussed the BearBox system over a group dinner, but Storms never shared his source code. They later exchanged some text messages, and McNamara requested the BearBox design specifications, which Storms sent via email. The email contained four attachments:
- A product specification sheet,
- A diagram of his system,
- Specification sheets on various hardware components, and
- A data file modeling a simulation of his system.
The two men never communicated again.
Lancium subsequently obtained a patent (the ’433 patent) on a set of computing systems that perform computational operations and determine performance strategies for the systems that set power consumption targets. When Storms learned of the patent, he sued Lancium, alleging he was the sole or joint inventor. After the trial court ruled against him, he appealed.
Court buries claim
An alleged joint inventor on a patented invention must demonstrate that he or she contributed significantly to the conception — the definite and permanent idea of the invention — or actual development of at least one patent claim. These contributions must arise from some type of joint behavior, such as collaboration or working under common direction with the other inventors.
The alleged joint inventor’s testimony alone is insufficient to prevail — he or she must also present evidence corroborating that testimony. Such evidence may include contemporaneous documents, physical evidence, circumstantial evidence about the inventive process and the testimony of another person. The court then applies a “rule of reason” to assess whether the inventor’s story is credible.
As the Federal Circuit noted, the only information Storms shared with Lancium was the 2019 email with attachments. Storms conceded that nothing from the hardware spec sheets related to the patented invention.
As for the other attachments, the appellate court agreed with the trial court that either they didn’t establish Storms conceived of the invention or he couldn’t show that he communicated any information before Lancium’s independent conception of the invention. Lancium’s 2018 application established that it had already conceived of such a system when Storms met McNamara.
Corroborating evidence
The appellate court affirmed the denial of Storms’ claim that he was either a sole or joint inventor of the ’433 patent. This case illustrates that corroborating evidence may be required to succeed on an inventorship or co-inventorship claim.
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