NARTRON CORPORATION v. SCHUKRA U.S.A., (Fed. Cir. March 5, 2009)
The District court granted summary judgment of dismissal of the infringement suit for failure of the patentee to join an alleged co-inventor on the patent being asserted. The CAFC reversed because "the alleged co-inventor, provided only an insignificant contribution to the invention of claim 11 of the ’748 patent." Claim 1 and claim 7 of the patent were being asserted. Claim 11 the defendant alleged was also invented by an individual who was not listed as an inventor. The listed inventors admit that they did not "invent the lumbar support adjustor including an extender recited in claim 11." Benson, who is the alleged unlisted inventor, claimed to have provided the listed inventors with the idea of the extender. Benson admitted that the extender was part of the prior art in an automobile seat. The district court held that Benson was a co-inventor because Benson "had conceived of the extender element of claim 11, and, as a co-inventor, he was required to have been joined as a plaintiff in any infringement suit." Therefore, the case was dismissed.
The patentee argued that the extender element was in the prior art and therefore could not have supported a claim of co-inventorship. The patentee argued that the invention related to the controller of the seat not the lumbar support or the extender. The patentee also argued that regardless of whether the element was in the prior art the contribution was insignificant to the invention. The alleged infringer argued that because the combination was patentable Benson should be listed. The defendant also argued that an aspect of a claim cannot be insignificant simply because it appears in a dependent claim.
The Federal Circuit reversed the District court. The Court held "Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor." “One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.” Ethicon, 135 F.3d at 1460. Moreover, a joint inventor must “contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387 F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)). The court held that Benson's contribution was no more than "the exercise of ordinary skill in the art."
The court also looked at the specification and noted that the specification focused on the controller not the elements of the seat. They also pointed out, "The specification mentions the extender only once in a twenty-column patent." and it was discussing the background upon which the controller was built, implying that the number of times and where an element is stated may impact whether it is significant or not. The court further explained, "Benson’s contribution of the extender amounted to “nothing more than explaining to the inventors what the then state of the art was and supplying a product to them for use in their invention.”
The court did limit the holding to facts such as these. The court stated, "This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11."
Case can be found here.
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