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October 28, 2008

Belated Inventor

Oren Tavory might have been a co-inventor in the patents that net NTP $612.5 million from Research in Motion (RIM). Code he helped write was part of the parent patent application. Tavory was deposed in the NTP patent litigation, but didn't state an inventorship claim then. But after NTP won the RIM lotto, which Tavory found savory, he changed his mind. Too late.

Oren Tavory v. NTP (CAFC 2007-1527) non-precedential

A co-inventor contributes conception of at least one claim.

A patent is presumed to name the correct inventors, thus a putative unnamed co-inventor must prove his inventorship by clear and convincing evidence. Hess v. Adv. Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). The "touchstone" of inventorship is conception, which requires a "definite and permanent idea of the complete and operative invention." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)). A co-inventor must prove he contributed to this conception of the claimed invention. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). The contribution must be more than simply the exercise of ordinary skill in the art. Id. Simply reducing to practice that which has been conceived by others is insufficient for co-inventorship. Id.

However, a co-inventor need not contribute to the conception of every claim of a patent; a single claim is sufficient. 35 U.S.C. § 116; Ethicon, 135 F.3d at 1460. And he need not "make the same type or amount of contribution" as the other co-inventors. 35 U.S.C. § 116; Gemstar-TV Guide Int'l, Inc. v. Int'l Trade Comm'n, 383 F.3d 1352, 1381 (Fed. Cir. 2004). As a result, no individual co-inventor need have a "definite and permanent idea of the complete and operative invention" so long as all of the co-inventors collectively satisfy that requirement. See 35 U.S.C. § 116; Gemstar, 383 F.3d at 1381; Burroughs, 40 F.3d at 1228.

Independent evidence is requisite to prove inventive contribution.

A co-inventor's own statements are inadequate to prove conception as a matter of law and thus must be corroborated by independent evidence. Ethicon, 135 F.3d at 1461. This evidence can be in the form of contemporaneous documents or the oral testimony of an independent witness. Id.; Gemstar, 383 F.3d at 1382. The evidence must establish that the inventor(s) made a "contemporaneous disclosure that would enable one skilled in the art to make the invention." Burroughs, 40 F.3d at 1228. In the co-inventor context, the contemporaneous disclosure must enable a skilled artisan to practice the portion of the invention that the co-inventor contributed.

Tavory was not convincing to his inventorship, as he couldn't get anyone to stand up for him.

However, no witness saw Tavory creating the program, and none testified as to any technical details either learned from Tavory or seen first-hand. No one testified about ever seeing Tavory's code, and no contemporaneous copy of the code or documentary evidence of the program is in the record. Moreover, no testimony or any other record evidence indicates whether the contemporaneous information testified to by Tavory's witnesses would enable a person of ordinary skill in the art to create a program like the one Tavory allegedly created. Thus, the testimony Tavory relies on fails to raise a genuine issue of material fact because they do not bear on conception and do not indicate Tavory ever made a contemporaneous enabling disclosure.

Judge Newman, legal surgeon, picked at case law used in Chief Judge Michel's opinion, while concurring, and throwing in laches.

His explanation, that no one asked him if he was a joint inventor, does not excuse this silence, in the circumstances of his knowledge of and participation in the litigation. The undisputed facts evoke prima facie laches and estoppel, which have not been rebutted.

Posted by Patent Hawk at October 28, 2008 4:38 PM | Litigation


J. Newman is the best.

Posted by: JD at October 29, 2008 1:15 PM