Failure to List Co-Inventor Dooms Infringement Claim

The Federal Circuit has recently ruled that failure to list a co-inventor properly caused the only named inventor to lose their patent infringement case.

The case is Blue Gentian, LLC v. Tristar Prod., Inc.

Blue Gentian, LLC, National Express, Inc., and Telebrands Corp. (collectively, “Blue Gentian”) sued Tristar Products, Inc. (“Tristar”) for infringement of six US patents. The utility patents relate to an expendable hose, and the design patents claim the ornamental design for the hose assembly.

Blue Gentian owns all the asserted patents. Michael Berardi, the principal of Blue Gentian, was the sole named inventor on each patent.

Tristar counterclaimed to correct the inventorship of all six patents. The district court determined that a nonparty, Gary Ragner, should have been a named co-inventor on all asserted patents. Accordingly, the district court entered judgment on the inventorship counterclaim in Tristar’s favor and ordered correction of the patents under 35 U.S.C. § 256.

Under 35 U.S.C. § 256,

(a)CORRECTION.—
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

(b)PATENT VALID IF ERROR CORRECTED.—
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned, and the Director shall issue a certificate accordingly.

The dispute dates back to 2011 when Ragner Technology Corporation sought investors to bring its expandable hose to market. Mr. Ragner, founder of Ragner Tech., and others met with Mr. Berardi, the named inventor of the patents at issue.

Ragner has a B.S. in physics and an M.S. in aerospace engineering and has designed many expandable hose prototypes.

Berardi has a degree in sociology and, at the time of the meeting, had no experience designing or building hoses.

Berardi watched a video demonstrating Ragner’s MicroHose and claimed that before the meeting, he came up with the idea for his expandable hose while at the gym.

Noted the court,

Mr. Ragner testified that during the meeting, Mr. Berardi “asked whether [h]e could replace . . . the wire spring with elastic,” and Mr. Ragner responded by saying that you could and by explaining that his “first two prototypes had a surgical tubing in them for the retracting force.”

Within hours after the meeting, Mr. Berardi went to Home Depot to buy supplies to build a hose prototype. The very next day, he tested his prototype. Less than three months after the meeting, he filed a patent application for an expandable hose, with himself listed as the sole inventor.

Blue Gentian, Berardi’s company, sued Tristar, licensee of Ragner’s patents, for infringement in 2012.

Tristar counterclaimed to correct inventorship.

An alleged joint inventor must show that they contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim.

These contributions must arise from “some element of joint behavior, such as collaboration or working under common direction” with the other inventor(s).

Whether an alleged co-inventor’s account of inventorship is corroborated is a fact-intensive inquiry governed by a rule-of-reason test.

The court found that there was sufficient collaboration between Ragner and Berardi based on the information exchanged at the meeting:

Mr. Berardi was shown detailed graphics and photographs containing confidential information about the MicroHose, … he held and used a prototype of the MicroHose, and … Mr. Ragner verbally explained alternative designs.

The court concluded that

the strength of documentary evidence showing Mr. Ragner’s familiarity with the three hose elements before the meeting lends credibility to his account of conveying those ideas to Mr. Berardi at a meeting centered around discussing and presenting on an expandable hose.

Also,

Mr. Berardi’s prototype, physical evidence created within a day of the meeting, strongly indicated that Mr. Ragner’s story was credible.

Blue Gentian argued that it was significant that Ragner attended the meeting to procure investment for a different hose, not design an alternative. The court disagreed:

Since Mr. Ragner did not need to conceive of the entire invention, he certainly did not need to be intent on inventing the complete invention ultimately claimed before he started collaborating.

The Federal Circuit agreed with the district court’s conclusion that Ragner contributed significantly to the conception of at least one claim of each asserted Blue Gentian patent.

The Court noted that

People may be joint inventors even though they do not physically work on the invention together or simultaneously and even though each does not make the same type or amount of contribution.

In summary, said the court,

Mr. Ragner showed Mr. Berardi confidential information about hoses he had designed, discussed technical details about how he planned to manufacture his hose and discussed alternative ways to build an expandable hose. Mr. Berardi built off those contributions and immediately began building prototypes of the expandable hose eventually claimed in the asserted patents.

Because Tristar (via Ragner) was given rights equal to those of Blue Gentian (via Berardi), Blue Gentian had no right to sue Tristar and no longer had the exclusive right to sell the hose. Thus, the patent infringement case was dismissed.

This case shows that it’s important to name all the inventors on a patent. Naming someone as an inventor doesn’t mean they necessarily own the patent. That depends on the relationship between the parties and whether patent rights have been assigned.

It’s also important to ensure that employees and consultants who contribute to an invention assign their patent rights to the employer/client.

Also, a properly signed non-disclosure agreement (NDA) might have gone a long way to preserving Ragner’s rights to the new hose after the 2011 meeting. Such an NDA could have included a clause that any improvements to the invention disclosed by Ragner developed during the meeting would also belong to Ragner.