August 11, 2016

District Court Correctly Added Inventors Who Contributed to at least one Claim Element

By Bryan K. Wheelock, Principal

In Vapor Point LLC. v. Moorhead, [2015-1801, 2015-2003] (August 10, 2016), the Federal Circuit affirmed the district court’s correction of inventorship, dismissal of the infringement action, and denial of a attorneys’ fees.

A person who alleges that he is a co-inventor of the invention claimed in an issued patent who was not listed as an inventor on the patent may bring a cause of action to correct inventorship in a district court under 35 U.S.C. § 256.  Inventorship is a question of law entitled to de novo review by this court.  All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.

The Federal Circuit agreed that the district court’s findings were sufficient to support its inventorship judgment.  Co-inventors need not physically work together or at the same time, make the same type or amount of contribution, or make a contribution to the subject matter of every claim of the patent.  Inventorship is determined on a claim-by-claim basis.

The Federal Circuit said that inventorship and ownership are separate issues.  The patent owner waived the Federal Circuit’s review of whether the added inventors had an obligation to assign the invention by affirmatively representing to the district court that resolution of the inventorship issue would dispose of the infringement issue.