ND Cal.: Late Claim for Inventorship Barred by Laches

Mark Moore v. Broadcom Corp. (c06-05647), February 12, 2008

While working at Intermec, Inc., inventor Beard filed for a provisional application in 1997 that was ultimately converted and issued as a U.S. patent. Right around the same time, Beard was collaborating with Moore to start a new venture, and they discussed various concepts that were subsequently patented. During their discussions, Moore was shown Beard's provisional patent, in which Beard was listed as the sole inventor. Beard later assigned his patent to Intermec.

After a series of assignments, Broadcom became the sole owner of the Beard patent.

In 2006, Moore sued Beard and Broadcom seeking to be declared a co-inventor of the Beard patent, and also sought damages for unjust enrichment. The defendants moved for summary judgment, arguing that Moore's claim was barred by laches.

Relying on the CAFC's Aukerman and Advanced Cardiovascular decisions, the district court acknowledged that laches would be presumed upon proof that the omitted inventor delayed filing suit for more than 6 years after actual or constructive knowledge.

The Court first determines if the presumption of laches applies to the instant case. In infringement actions, the period of delay “is measured from the time the plaintiff knew or reasonably should have known of the defendant’s alleged infringing activities to the date of suit” but cannot begin prior to the issuance of the patent. Aukerman, 960 F.2d at 1032. However, in cases for correction of inventorship, the Circuit has held that “[w]hen applying the equitable doctrine of laches in order to bar a claim, the period of delay is measured from when the claimant had actual notice of the claim or would have reasonably been expected to inquire about the subject matter” and not from the date of the issuance of the patent. See Advanced Cardiovascular Systems, 988 F.2d at

Here, Defendant Beard provided Moore with a copy of the provisional application around December 31, 1997, the date that the provisional application was filed. Moore was aware of the contents of the provisional application on or about December 31, 1997, and was aware that he was not named as an inventor on the provisional application. Thus, Defendants argue, more than eight years passed between the moment Plaintiff knew, or reasonably should have known, that Defendants had filed an application for a patent on the invention, and failed to name him, and the time Plaintiff filed suit.

Expanding upon Advance Cardiovascular, where the omission was discovered after the patent had issued, the district court stated that,

While not discussed in Advanced Cardiovascular Systems, pursuant to 35 U.S.C. § 116, correction of inventorship may be accomplished prior to the issuance of a patent by application to the commissioner. See 35 U.S.C. § 116; 37 C.F.R. § 1.48. In addition, an action to correct inventorship while the patent application is still pending, under 35 U.S.C. § 116, includes the requirement that such amendment must be diligently made . . . The requirement of diligence supports a finding that delay is discouraged, and laches may apply, even at these early stages. Thus, the rationale of Advanced Cardiovascular Systems, that laches may apply at any time that inventorship may be remedied but should not apply before the omitted inventor has learned of the claim, applies in equal force to the time during which a patent application is pending, but before it is issued.

Applying the presumption of laches, the district court found that Moore could not overcome the presumption, and granted summary judgment in favor of the defendants.

Read/download the opinion here (link)

Court Dismisses Inventorship/Copyright Claim Against NTP

Oren Tavory v. NTP, Inc., E.D. Va. (3:06–CV–628), July 17, 2007

Not long after NTP obtained a $612.5 million settlement against RIM, Tavory filed suit in the E.D. Va., asking to be joined as an inventor with respect to NTP's "BlackBerry" patents, and also alleged copyright infringement and unjust enrichment.

After dismissing the claim of unjust enrichment, the Court granted Summary Judgment in favor of NTP on inventorship and copyright infringement. Needless to say, the Court was not moved by Tavory's story:

There are few coincidences in life, and the timing of Tavory’s assertions is far too convenient to avoid suspicion. Not only did the Plaintiff wait until after the death of Mr. Campana, who would surely have been a material witness, to stake his claim, the copyright registration was not filed until after NTP had entered into a nine-figure settlement with respect to the patents Tavory says infringe his rights. Despite these serious infirmities, the most damning evidence has been rendered by the Plaintiff himself. He has been deposed twice. On the first occasion, in 2002, Tavory testified that he could not remember whether he wrote the Push Software at Mr. Campana’s direction, or to what extent he was involved in the authorship of the source code. (Pl.’s 2002 Dep. passim.) Four years later, the Plaintiff sat for another deposition, this time in connection with the present matter. In spite of the fact that it was then 2006, and that he was testifying about events that had happened 16 years previously, Tavory’s memory was much clearer.

View/download the opinion here (link)

Inventorship/Ownership Issues Lead to Invalidity by Double-Patenting

In Re Metoprolol Succinate Patent Litigation (06-1254), July 23, 2007

Companies Astra and Lejus Medical AB had a dispute over the ownership of a Lejus patent (the '318 Patent), which was originally developed by ex-Astra employees. When the ownership dispute was settled, Lejus agreed to divide claims to "metropol succinate" and to a "pharmaceutical composition" having metropol succinate as an active substance, and assigned those claims to Astra. Curiously, inventorship issues were never resolved.

Lejas subsequently filed a CIP off of the disputed patent (the '167 Patent), and followed with another continuation (the '154 Patent). The applications were then assigned back to Astra. Astra did not mention the inventorship dispute to the USPTO.

Astra filed suit on the two patents, and the defendants argued that the original Lejus patent ('318) created obviousness-type double patenting against the subsequent patents. Also, the defendant's argued that Astra's failure to disclose the inventorship dispute was inequitable conduct. The district court granted SJ in favor of the defendants on both counts. Due to the inventorship/ownership issues, Astra was unable to file a terminal disclaimer on the subsequent patents.

On appeal, Astra only challenged the invalidity of the '154 patent. The district court found the ’154 Patent to be a genus of the species claimed by the ’318 Patent. Since the species claimed by the ’318 Patent issued prior to the genus claimed by the ’154 Patent, the district court concluded that the ’154 Patent was "void for double patenting because it is not patentably distinct f[ro]m" Claim 8 of the ’318 Patent.

The CAFC agreed, stating that the critical inquiry remains whether the claims in a prior application define an obvious variation of the invention claimed in the patent:

[I]n this case, Claim 1 of the ’154 Patent claiming a compound (A1) is an obvious variation of Claim 8 of the ’318 Patent claiming a composition comprised of one compound of an enumerated list (A1, A2, A3, etc.), an inner layer (B), and an outer layer (C). Specifically, it would have been an obvious variation of Claim 8 of the ’318 Patent to omit the inner layer (B) and the outer layer (C).

The court also added in a footnote:

Moreover, the omission of the known elements from the composition in this case is "the product not of innovation but of ordinary skill and common sense." KSR Int’l Co. v. Teleflex Inc., 550 U.S. ----, 127 S. Ct. 1727, 1742 (2007).

Regarding the inequitable conduct, the CAFC reversed the finding of enforceability, stating that disputed material facts precluded summary judgment.

Judge Schall's Dissent:

Allowance of claim 1 of the ’154 patent to metoprolol succinate will not result in the improper extension of the patent for the invention claimed in the ’318 patent. That is because in this case, each patent is capable of being practiced by itself, without infringing the other. The public can practice the invention in claim 8 of the ’318 patent when it expires by using any of the ten active ingredients recited in the claim other than metoprolol succinate. While some may find it desirable to use metoprolol succinate as the active ingredient in claim 8 of the ’318 patent, and those individuals will be unable to do so until the ’154 patent expires, that does not result in the "extension" of claim 8 in the ’318 patent, or in any recognized form of double patenting.