The Claims Interpreted Report

Federal Circuit Upholds District Court Inventorship Ruling

In Tube-Mac Indus. v. Campbell, the Federal Circuit upheld a district court ruling mandating a correction of inventorship for US Patent 9,376,049. While nonprecedential, the Federal Circuit opinion nonetheless provided a refresher on requirements of inventorship and the standard used when inventorship is challenged.
The ‘049 patent is directed toward a container for transporting refrigerated gaseous fluids and originally named only a single inventor – Steven Campbell. Independent claim 1 of the ‘049 patent recites in part:

1. A lightweight intermodal container or road trailer based system for transporting refrigerated gaseous fluids, comprising:
…
a plurality of low-temperature resistant pressure vessels … each of said pressure vessels including a body portion and opposing domed end portions attached to said body portion, … and
at least one port boss affixed to each of said domed end portions, said at least one port boss including an inner component and an outer component, … said inner component and said outer component are compressed together to cause said inner plate to engage an inner surface of a respective one of said domed end portions and said outer plate to engage an outer surface of said respective one of said domed end portions to affix said at least one port boss to each of said domed end portions.

​When developing the invention, Campbell incurred a problem with the port boss slipping on a liner of the vessel. Unable to solve the problem on his own, Campbell approached Gary Mackay and Dan Hewson of Tub-Mac Industries Ltd. for assistance. Over the next few months, Campbell, Mackay, and Hewson exchanged draft designs and components to solve the port boss problem. These exchanges showed that Mackay and Hewson updated a male baseplate of the device for inclusion of an O-ring, a modified T-grove, and angular groves to create a better seal. Mackay and Hewson also updated a female baseplate for the device to include a starburst pattern of groves, which gave increased torsional rigidity. Additionally, Mackay and Hewson updated a female pipe of the device to have thinner walls, enabling the female pipe to be crimped onto a male pipe. Based at least on these contributions, Mackay and Hewson filed suit against Campbell under 35 U.S.C. § 256 to compel correction of inventorship and include themselves as named inventors on the ‘049 patent.
​To be named as a joint inventor, such person must:

(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Federal Circuit 1998).

When evaluating a claim for correction of inventorship claim under § 256 the first step is to undertake “a construction of each asserted claim to determine the subject matter encompassed thereby.” Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Federal Circuit 2002). After this first step, the contributions of each asserted joint inventor are compared with “the subject matter of the properly construed claim to then determine whether the correct inventors were named.” Id.

With respect to the first step, neither party requested any specific claim constructions and the district court determined that claim constructions were not necessary to resolve the inventorship dispute. With respect to the second step, the district court identified that the above discussed contributions of Mackay and Hewson were present in the Specification, Drawings, and Claims 1 and 5 of the ‘049 patent. The district court further found that the contributions of Mackay and Hewson were significant at least because prior to receiving help from Mackay and Hewson, Campbell had a “major problem” which would likely be a “road block to certification” of his original device, and found that Campbell’s original idea could not be reduced to practice merely with ordinary skill and without extensive research or experimentation. Ultimately, the district court sided with Mackay and Hewson and ordered correction of inventorship.

The Federal Circuit noted that inventorship determinations are reviewed de novo, with the underling factual findings reviewed for clear error. Based on the record discussed above, the Federal Circuit affirmed the district court ruling to add Mackay and Hewson as inventors.

Lessons for Practice

​This case highlights the importance of having defined contractual relationships when outside support is sought to aid in product development. Although inventorship and initial ownership of patent rights are statutorily defined by contribution to the invention, a contract can still dictate how those rights must be assigned. In the present case, the dispute regarding inventorship is likely rooted in Mackay and Hewson wanting to practice or license the invention, and Campbell wanting to restrict such activity by being named the sole inventor. Resolving these types of disputes after the fact, as is done here, is a dangerous tact for all parties – it opens the door to invalidating the patent in its entirety based on improper inventorship. Rather, the parties could have discussed ownership of patent rights in advance and contracted to require assignment of Mackay and Hewson’s rights to Campbell for a fee, or other suitable provision.

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