The Federal Circuit reaffirmed the importance of accurate inventorship and maintaining access to inventors after patenting in Fortress Iron, LP, v. Digger Specialties, Inc., finding two patents invalid for incorrect inventorship due to the omission of a coinventor.
Fortress Iron, LP (“Fortress”) sued Digger Specialties Inc. (“DSI”) for infringement of U.S. Patents 9,790,707 and 10,883,290. Fortress had worked with a quality control liaison, Quan Zhou Yoddex Building Material Co., Ltd. (“YD”), in developing both inventions. Two YD employees were inventors, but Fortress failed to name them in the patent. While one inventor was able to be added under 35 U.S.C. §256(a), the other inventor, Huang, was unable to be located.
Fortress sought partial summary judgment to correct the inventorship pursuant to 35 U.S.C. §256(b). Simultaneously, DSI sought summary judgment of invalidity due to incorrect inventorship. The district court denied Fortress’ motion and granted DSI’s motion, finding both patents invalid due to incorrect inventorship. The Federal Circuit’s decision affirming the district court is summarized below.
Inventors are parties of concern under 35 U.S.C. §256(b)
35 U.S.C. §256(b) allows a court to correct inventorship to validate a patent otherwise invalid for improper inventorship on “notice and hearing of all parties concerned” (emphasis added). Whether an omitted coinventor is a “party concerned” was a matter of first impression for the Court. Citing to Chou v. University of Chicago[1], the Federal Circuit explained that an inventor is a party of concern under §256(b) even when the inventor does not have an ownership right in the patent at issue and regardless of whether the inventor has constitutional standing. Therefore, the Court reasoned, a known omitted coinventor is a party concerned. Fortress’ inability to locate Huang, therefore, rendered Fortress unable to provide the necessary notice and hearing for all parties concerned under §256(b).
Joinder of all inventors is necessary for validity
Fortress also asserted that summary judgment of invalidity due to incorrect inventorship was improper and only one inventor must be named. In response, the Federal Circuit made it clear that “when an invention has multiple inventors, they must all be listed on the patent.” The Court noted that 35 U.S.C. §100(f) expressly states that the term inventor refers to all of the inventors collectively. Further, the Court explained that the language of §256(b), specifically that “[t]he error of omitting inventors…shall not invalidate the patent in which such error occurred if it can be corrected,” necessarily implies that an erroneous omission of an inventor that cannot be corrected invalidates a patent. Accordingly, the Federal Circuit found that Huang was an undisputed and omitted coinventor who could not be added, therefore, summary judgment invalidating the patents was proper.
Strategic Takeaways
This case demonstrates the importance of obtaining and maintaining inventor’s contact information, particularly when the inventors are not employees of the applicant. While the initial failure to list both inventors could later be rectified, Fortress’ inability to contact Huang ultimately led Fortress to lose the case and both patents.
The following simple measures may aid in preventing these issues:
- collecting inventors’ contact information during the application process
- collecting personal contact information when an employee leaves a company
- ensuring all coinventors are listed on a patent application
- performing a claim-by-claim analysis with the inventors to ensure proper inventorship is maintained throughout prosecution
If you have any questions about this case or patent procurement generally, please contact a Dinsmore intellectual property attorney.
[1] Chou v. University of Chicago, 254 F.3d 1347, 1357 (Fed. Cir. 2001) wherein the inventor was found to have a right to participate in the § 256(b) action as a party concerned within the purview of § 256(b) despite having no ownership rights in the patent at issue and regardless of whether she meets the constitutional standing requirements necessary to invoke it.
[2] Pannu v. Iolab Corp., 155 F.3d 1344, 1348–49 (Fed. Cir. 1998) (“If a patentee demonstrates that inventorship can be corrected as provided for in [§] 256, a district court must order correction of the patent, thus saving it from being rendered invalid.”).