The opinion of the court was delivered by: Legge, U.S. District Judge.
AMENDMENT TO DECISION GRANTING PARTIAL SUMMARY JUDGMENT
On December 5, 2000 the court granted partial summary judgment in favor
of defendants. The court's decisions were not set out in a written
order, but were stated in open court on the record of the reporter's
As a part of those decisions, the court ruled in favor of defendants on
the inventorship claim (Count 5) on the ground that 35 U.S.C. § 256
does not authorize correction of inventorship when the named inventor
acted with "deceptive intent" in securing inventor status. The court
cited General Electric Co. v. Brandon, 25 U.S.P.Q.2d 1885, 1887
(N.D.N.Y. 1992), University of Colorado Foundation v. American Cyanamid,
880 F. Supp. 1387, 1397-98 (D.Colo. 1995) and McMurray v. Harwood,
870 F. Supp. 917, 919-20 (E.D.Wis. 1994) for the proposition that there
must be a lack of deceptive intention on the part of the person
originally named as the inventor in order for a section 256 correction to
be ordered. See also ROBERT P. MERGES, PATENT LAW AND POLICY 821-24 (2d
ed. 1997); Bemis v. Chevron Research Co., 599 F.2d 910, 912 (9th Cir.),
cert. denied, 444 U.S. 966, 100 S.Ct. 454, 62 L.Ed.2d 378 (1979)
(analyzing section 256, prior to its amendment in 1992, and concluding
that it allows correction of inventorship only for innocent errors).
Since plaintiff's entire case rests on allegations that the substance of
defendants' '207 patent
was "misappropriated" from plaintiff, which is anything but an innocent
error, the court concluded that correction under section 256 was not
After the December 5, 2000 hearing but before judgment has been
entered, defendants draw the court's attention to cases from the Federal
Circuit that bring the continued validity of the above-cited authorities
into question. See University of Colorado Foundation, Inc. v. American
Cyanamid Co., 196 F.3d 1366, 1374 (Fed. Cir. 1999); Stark v. Advanced
Magnetics, Inc., 119 F.3d 1551, 1555 (Fed.Cir. 1997). Defendants request
that the court supplement its December 5 ruling to address additional
grounds for summary judgment on the inventorship claim.*fn1 The court
did not originally address defendants' additional grounds because it
regarded section 256 as an improper vehicle for inventorship correction.
The parties have fully briefed the inventorship claim. Plaintiff has
been accorded the opportunity to file a sur-reply on the issues.
Good cause appearing, the court therefore amends its December 5
decision on inventorship as follows.
35 U.S.C. § 256 authorizes federal courts and the PTO to resolve
inventorship contests involving issued patents. See MCV, Inc. v.
King-Seeley Thermos Co., 870 F.2d 1568, 1570 (Fed.Cir. 1989). Section 256
allows not only the addition of an inventor, but the complete
substitution of one inventor for another, provided that the true inventor
acted without deceptive intent. See Stark v. Advanced Magnetics, Inc.,
119 F.3d 1551, 1556 (Fed.Cir. 1997). Because prior law required
invalidation of a patent when nonjoinder or misjoinder were
demonstrated, the Federal Circuit has described Section 256 as a "savings
provision." Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed.Cir. 1998). "If
a patentee demonstrates that inventorship can be corrected as provided
for in section 256, a district court must order correction of the
patent, thus saving it from being rendered invalid." Id.
The inventor named in an issued patent is presumed to be the true
inventor. See Hess v. Advanced Cardiovascular Systems, Inc., 106 F.3d 976,
980 (Fed.Cir.), cert. denied, 520 U.S. 1277, 117 S.Ct. 2459, 138 L.Ed.2d
216 (1997). This presumption is a powerful one, because once a patent has
issued there is a "strong temptation for people who consulted with the
inventor and provided him with materials and advice, to reconstruct, so
as to further their own position, the extent of their contribution to the
conception of the invention." Id. Accordingly, "[t]he burden of showing
misjoinder or nonjoinder of inventors is a heavy one and must be proved
by clear and convincing evidence." Id. (quoting Garrett Corp. v. United
States, 190 Ct.Cl. 858, 422 F.2d 874, 880 (1970)).
It is axiomatic that "[c]onception is the touchstone of inventorship."
Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227-28
(Fed.Cir. 1994). "Conception is the formation in the mind of the
of a definite and permanent idea of the complete and operative
invention, as it is hereafter to be applied in practice." Ethicon, Inc.
v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed.Cir. 1998)
(citations and internal quotation marks omitted). "An idea is definite
and permanent when the inventor has a specific, settled idea, a
particular solution to the problem at hand, not just a general goal or
research plan he hopes to pursue." Burroughs Wellcome, 40 F.3d at 1228.
"Thus facts relevant to inventorship are those showing the conception of
the invention, for others may provide services in perfecting the
invention conceived by another without becoming an `inventor' by
operation of law." C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340,
1352 (Fed.Cir. 1998). The Federal Circuit has further explained that "the
critical question for joint conception is who conceived . . . the subject
matter of the claims at issue." Ethicon, 135 F.3d at 1460.
Correction of inventorship under section 256 is resolved by bench trial
and is not submitted to a jury. See Ethicon, Inc. v. United States
Surgical Corp., 921 F. Supp. 901, 904-05 (D.Conn. 1995), aff'd by
135 F.3d 1456 (Fed.Cir. 1998).
To establish priority of invention, a party must show: (1) possession
of every feature recited in the disputed claim; and (2) every limitation
of the claim was known to the inventor at the time of alleged invention.
Kridl v. McCormick, 105 F.3d 1446, 1449-50 (Fed.Cir. 1997). To establish
that the named inventor derived the invention from another, a party must
show; (1) prior conception of the claimed subject matter, and (2)
communication of the conception to the named inventor. Price v. Symsek,
988 F.2d 1187, 1190 (Fed.Cir. 1993). "While the ultimate question of
whether a patentee derived an invention from another is one of fact, the
determination of whether there was a prior conception is a question of
law, which is based upon subsidiary factual findings." Id. (citations
"[A]n inventor's testimony respecting the facts surrounding a claim of
derivation or priority of invention cannot, standing alone, rise to the
level of clear and convincing proof." Id. at 1194. An alleged inventor
must supply independent evidence to corroborate the essential aspects of
his testimony. See Woodland Trust v. Flowertree Nursery, Inc.,
148 F.3d 1368, 1371 (Fed.Cir. 1998). Whether the proffered evidence
sufficiently corroborates the alleged inventor's testimony is evaluated
under a "rule of reason" standard. Price, 988 F.2d at 1195 ("An
evaluation of all pertinent evidence must be made so that a sound
determination of the credibility of the [alleged] inventor's story may be
reached."). Of course, "there need not be corroboration for every factual
issue contested by the parties." Ethicon, 135 F.3d at 1464. Still "the
[alleged] inventor's testimony requires corroboration before it can be
considered," Price, 988 F.2d at 1195, and he "must provide clear and
convincing evidence of supporting facts, including corroborating
evidence." C.R. Bard, 157 F.3d at 1353. ...