Docket No. 2015-1801, -2033
O’MALLEY, CHEN, STOLL
August 10, 2016
Brief Summary: DC correction of inventorship (four key concepts encompassed by NV’s patents, three of the four contributed by VP) and dismissal affirmed (NV waived its rights to argue assignment). DC denial of NV’s request to make the case exceptional also affirmed (opinion does not include a detailed analysis of this issue).
Summary: NanoVapor (NV) appealed DC correction of inventorship of its patents related to the removal of volatile fuel vapors (“VOCs”) from oil and gas storage tanks and the like (§ 256; adding two of Vapor Point’s (VP)’s people as inventors on NV’s patents) and dismissal of the action with prejudice. The DC also denied VP’s motion for exceptional case status and attorney’s fees, which VP appealed. Regarding inventorship, the DC found four key concepts were encompassed by NV’s patents and that three of these concepts were contributed by two of VP’s people (one by “Nathan” and two by “Matheson”) (“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.” (Ethicon, FC 1998)), found Moorehead (NV) should not be included as an inventor on VP’s patents, and dimissed the case “without deciding whether Nathan and Matheson had an obligation to assign their inventorship interests to” NV (as argued by NV). The FC panel opinion explained that inventorship is a question of law reviewed de novo and that “[o]n appeal from a bench trial, we review a [DC’s] decision for errors of law and clearly erroneous findings of fact” (Eli Lilly, FC 2004; Gen. Elec., FC 2014; Trovan, FC 2002). It found the DC’s findings regarding the contributions by Nathan and Matheson to be “supported by substantial evidence”, even though it agreed with NV that the court erred regarding one aspect (i.e., Matheson did not contribute to one of the two concepts) (“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’” (35 USC 116) and “[i]nventorship is determined on a claim-by-claim basis” (Trovan, FC 2002)). The FC panel also agreed with the DC that NV “had waived its right to ask the court to decide the assignment question” because it only asserted the argument “as an equitable defense to [VP’s] state law claims” that “were dismissed with prejudice”. As such, “[t]he only remaining claims…were those seeking a correction of inventorship” and “inventorship and ownership are separate issues” (Beech Aircraft, FC 1993). And NV had “affirmatively represent[ed] to the [DC] that resolution of the inventorship issue would dispose of the infringement issue.” The FC panel also agreed with the DC’s denial of VP’s request to make the case exceptional, noting that although it “would have preferred a written explanation for its decision, upon review of the record, we do not find that the denial…was an abuse of the [DC’s] discretion.”