This is a family spat. Mardkha and Finkelstein met shortly before Finkelstein married Mardkha's sister-in-law. Mardkha's wife suggested he and Finkelstein do business together. Finkelstein had been in the diamond business for over twenty years.

Finkelstein sued in the Manhattan diamond district to be named co-inventor. (Southern District of New York case: 1:05-cv-00392-RJH).

The court ruled that cutting diamonds under instruction was the work of one of ordinary skill in the art, not worthy of co-inventorship.

Under 35 U.S.C. § 256, an inventor who was erroneously omitted from a patent may seek correction of the patent in federal court. In a § 256 proceeding, “the inventors as named in an issued patent are presumed to be correct.” Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997) (citations and internal quotation marks omitted). Because of this presumption and the temptation for even honest witnesses to reconstruct events in a favorable manner, the claimed inventor must meet a heavy burden of proving his case by clear and convincing evidence. See id. To satisfy this standard, the claimed inventor must provide evidence corroborating his testimony concerning conception of the invention. See Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998); Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004). Corroborating evidence may take many forms, including contemporaneous documentary or physical evidence, oral testimony of others, and circumstantial evidence. See Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1303 (Fed. Cir. 2002); Sandt Tech., Inc. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001). Whether the testimony is sufficiently corroborated is evaluated under a “rule of reason” analysis, whereby the Court views all evidence before it in making a sound determination as to the credibility of the claimed inventor’s story. Id. at 1195.

“To be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil and Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997); see also Eli Lilly & Co., 376 F.3d at 1358; Ethicon Inc., 135 F.3d at 1460. Conception is a term of art in patent law. “Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known.” Sewell v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Conception is complete when “only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.”

A claimed inventor need not make the same type or amount of contribution as the named inventor, nor “make a contribution to every claim of a patent. A contribution to one claim is enough.” Ethicon, Inc., 135 F.3d at 1460 (citations omitted). That is, “inventorship is determined on a claim-by-claim basis.” Trovan, Ltd., 299 F.3d at 1302. Moreover, “a joint inventor as to even one claim enjoys a presumption of ownership in the entire patent.” Ethicon, Inc., 135 F.3d at 1466. As courts have recognized, “[t]he line between actual contributions to conception and the remaining, more prosaic contribution to the inventive process that do not render the contributor a co-inventor is sometimes difficult to draw.” Eli Lilly & Co., 376 F.3d at 1358.

It does not make a contributor a co-inventor when the contributor does “nothing more than explain[] to the inventors what the then state of the art was and supply[] a product to them for use in their invention.” Hess, 106 F.3d at 981; see also Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (“an inventor may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent”). Thus, in Hess, a company representative who suggested a material to two inventors and a method of binding that material was not a coinventor where the two inventors took the material and, after significant experimentation, used the material, but not the binding method. 106 F.3d at 980–81. Nor does exercising ordinary skill in the art to reduce an idea to practice make one a co-inventor. Sewell, 21 F.3d at 416. Thus, in Sewell, a computer chip designer following explicit specifications by the inventor was not deemed to be a co-inventor. Id. Nor does “merely assisting the actual inventor after conception of the claimed invention” make one a co-inventor. Ethicon, Inc., 135 F.3d at 1460.

A contributor cannot be named a coinventor if he only exercises ordinary skill in the art to reduce an idea to practice, because at that stage conception is already complete. See Ethicon, Inc., 135 F.3d at 1460; Burroughs Wellcome Co., 40 F.3d at 1228. This question is factual, and a genuine issue of material fact will preclude the entry of summary judgment. See Moor v. Honeywell Int’l Inc., No. 02-3142, 2006 U.S. Dist. LEXIS 14025, at *6, *11 (D.N.J. Mar. 13, 2006) (citing Caterpillar Inc. v. Sturman Indus., 387 F.3d 1358, 1377–78 (Fed. Cir. 2004)). However, the Court finds no genuine issue of material fact as to this question.

Finkelstein had no corroborating evidence to support his contention of being co-inventor.

Mardkha contends that the subject matter of the patent is quite simple, and consists only of a cushion-shaped diamond with a brilliant crown and step pavilion. The invention was conceived by him alone, and conception was complete by the time he involved plaintiff in the process. (Defs.’ Mem. of L. 6, 10.) Plaintiff’s entire contribution consisted of “relaying directions from Mardkha to diamond cutters” and clearly does not rise to the level of co-inventorship. (Id. 7.) Moreover, plaintiff is barred by laches or otherwise estopped from asserting co-inventorship because he assisted or remained silent as Mardkha proceeded through the patenting process. (Id. 19–23.)

Without corroborating evidence, a trial would devolve into Mardkha and plaintiff both contending that the [claimed novel features] were their idea. In such a case, plaintiff must lose as a matter of law. See Linear Tech. Corp v. Impala Linear Corp, No. C-98-1727, 2001 U.S. Dist. LEXIS 25905, at *91 (N.D. Cal. Sept. 21, 2001) (granting summary judgment based on the lack of any corroborating evidence), aff’d as to this holding, vacated on other grounds, 379 F.3d 1311 (Fed. Cir. 2004); Stern v. Trs. of Columbia Univ., No. 01 Civ. 10086 (RCC), 2005 U.S. Dist. LEXIS 2418, at *19 (S.D.N.Y. February 18, 2005) (granting summary judgment based on “lack of any clear and convincing corroborating evidence”).

Finkelstein wasn't entirely out of the money though; he had asserted that that Mardka had not paid him commensurately. Mardkha would have to prove that he was not enriched at Finkelstein's expense.

Under New York law, the basic elements of an unjust enrichment claim are: “1) defendant was enriched; 2) such enrichment was at the expense of the plaintiff; and 3) the circumstances were such that in equity and good conscience the defendant should make restitution.” Chase Manhattan Bank v. Banque Intra, S.A., 274 F. Supp 496, 499 (S.D.N.Y. 1967) (citing Miller v. Schloss, 113 N.E. 337 (N.Y. 1916)). Mardkha testified that Tiffany paid him $500,000 initial payment and the larger of $250,000 annually or 1.5% of royalties on sales of the patented diamond. (Mardkha Tr. 277–78.) Thus, Mardkha and his company have received, at a minimum, $1.5 million to date from the licensing of the diamond. From the evidence before the Court, it appears that plaintiff received $5,000 for his assistance in developing the diamond, or at most several thousand dollars more if he marked up the labor, material, and shipping costs listed on the invoice. While plaintiff’s contribution to the diamond patent is insufficient (or insufficiently corroborated) to make him a co-inventor and co-owner, he has certainly raised a genuine issue of material fact as to whether Mardkha was unjustly enriched at his expense. Mardkha is unable to show that as a matter of law, plaintiff fails to satisfy any of the three elements of unjust enrichment. Therefore, the Court denies summary judgment dismissing the unjust enrichment claim.