Docket No. 2015-1892, -1955
NEWMAN, SCHALL, CHEN
September 29, 2016
Brief Summary: DC decision award of damages and attorney fees /default judgment vacated and remanded, while its decision not to consider inventorship issues was affirmed.
Summary: Parrot appealed DC award of damages for infringement of US 7,584,071 and 8,106,748 relating to drones (“moving the handheld controller itself causes a synchronous movement of a remote-controlled device”), the award of attorney fees “as a sanction for Parrot’s failure to comply with two discovery orders issued by the court”, and the denial of Parrot’s motion to dismiss the complaint for lack of standing because the assignments were invalid. “Parrot also raised the affirmative defense of improper inventorship” (§ 102(f)). The FC opinion first addressed the assignment issue. Parrot alleged the sole inventor’s husband “is the true inventor or, at the very least, is a co-inventor” (arguing “she had ‘just a simple idea’ to control aircraft using the movements of a remote controller, and did not have a solution…or even understand any of the technology…Mr. Ding accounted for all aspects of the invention except the ‘idea’….”) The FC panel concluded that “Parrot…failed to advance a persuasive reason for not accepting” the presumption that “Ms. Lee is correctly named as the sole inventor” (Acromed, FC 2001) and “does not cited any controlling authority suggesting” the court “must undertake…a substantive examination of inventorship in order to resolve an issue of standing in an infringement action where the plaintiff’s title is not otherwise in dispute” (“Parrot’s reliance on Pandrol” (FC 2003) “is misplaced.”) The DC decision on this point was therefore affirmed. The FC panel also concluded the DC abused its discretion when it issued the discovery orders (it “erred in five respects”, e.g., “ordering Parrot to produce…code which has never been shown to be relevant”) and when it imposed the “drastic” default sanction (e.g., “We do not think Parrot should be faulted for requesting clarification…or for seeking additional safeguards for its source code…the record does not support a finding that lacking this information prejudiced Drone” (information that “Drone has not shown…is relevant or necessary to its case”)…Parrot repeatedly offered to make the on-board source code available for inspection.”) However, it did note “that Parrot’s actions displayed a measure of misconduct” (e.g., “vacillated between positions of compliance and noncompliance”) but nevertheless vacated the discovery orders and entry of a judgment of default and remanded the case. Judge Newman concurred and separately addressed the inventorship issue explaining “[o]ne who merely suggests and idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor” (Nartron Corp. FC 2009) and “[a]n incorrect inventor or inventive entity cannot pass title by assignment, because that entity has no title to pass.”