In Nartron Corp. v. Schukra U.S.A., Inc., 2009 WL 539912 (Fed. Cir. 2009), the Federal Circuit recently addressed the issue of co-inventorship, holding that one “does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim.”
Nartron asserted patent infringement of U.S. Patent No. 6,049,748 (“the ’748 patent”) against Schukra and Borg Indak. The ’748 patent relates to a controller that is capable of providing existing automotive seats with a massage functionality. Schukra had contracted with Nartron to design the control system described and claimed in the ’748 patent. Borg Indak supplied electronics to Schukra and was sued for contributory infringement.
The U.S. District Court for the Eastern District of Michigan dismissed the patent infringement complaint on Borg Indak’s motion for summary judgment because of Nartron’s failure to join an alleged co-inventor. The District Court found that Joseph Benson, an employee of Schukra, contributed an element to one of the dependent claims of the patent and the contribution was “not insignificant in quality, when the contribution is measured against the dimension of the full invention.” Nartron Corp. v. Borg Indak, Inc., 2008 WL 896060 (E.D. Mich. 2008) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
In finding that Benson should have been named as a co-inventor of the ’748 patent, the District Court focused on claim 11 of the ’748 patent, which specifies that the “lumbar support adjustor includes an extender.” Claim 11 is, through intervening dependent claims 5 and 6, dependent on claim 1, which is directed to “[a] seat control module for introducing massage to a seat control with an adjustable lumbar support, and control actuators.” Benson claimed to have provided Nartron with the idea for the extender for a lumbar support adjustor, and the named inventors conceded that it was not their idea to use the extender. The District Court further found sufficient evidence to corroborate Benson’s claim of contribution. Both parties also conceded that the idea of using an extender for a lumbar support adjustor had previously been employed in numerous automobile seats, and, as such, would have been well-known by a person of ordinary skill in the art at the time of the invention. Nartron further argued that the reference to “an adjustable lumbar support” in the preamble of claim 1 makes it clear that the lumbar support adjustor was part of the background of the invention, and that the inventive aspect of the invention was the controller.
The Patent Act does not require joint inventors to contribute equally to a claimed invention. Instead, in order to qualify as a co-inventor, one must (1) contribute in a 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 measured against the full dimension of the invention, and (3) do more than merely explain to the actual inventors well-known concepts or the current state of the art. Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997); Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).
On appeal, the Federal Circuit reversed the District Court’s grant of summary judgment, holding that Benson’s contribution was too insignificant for Benson to be considered a co-inventor. In evaluating the significance of Benson’s contribution, the Federal Circuit considered the element contributed by Benson in the context of the full dimension of the invention claimed in claim 11. The Federal Circuit found that “the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art.” In other words, the mere fact that a putative co-inventor suggests combining existing elements does not defeat a claim to co-inventorship. Instead, the Federal Circuit suggests that the inquiry should focus on the contribution in the context of the invention to determine if the suggestion was beyond the exercise of ordinary skill.
In evaluating Benson’s contribution in the context of the invention, the court noted that “[t]he specification and claims of the ’748 patent primarily focus not on the structure of the seat itself, but on the structure and function of the control module, which operates the seat. The specification mentions the extender only once in a twenty-column patent.” Likewise, the court added “[t]he patent contains no description of the physical characteristics of the extender, nor does it contain any drawings of the extender.”
The Federal Circuit further observed that “the necessity for the invention described in the ’748 patent arose from the fact that existing automobile seats had the parts required to provide a massage (e.g., lumbar support adjustors including extenders), but simply lacked the controller that would move those parts in a way that would provide a massage.” As such, Benson’s contribution of the extender amounted to “nothing more than explaining to the inventors what the then state of the art was and supplying a product to them for use in their invention.” See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 981 (Fed. Cir. 1997).
In discussing the standard of review, the Federal Circuit briefly noted that the inventors as named in an issued patent are presumed to be correct and that a party alleging non-joinder “must meet the heavy burden of proving its case by clear and convincing evidence.” Id. at 976 (citing Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004)). In the present case, the defendant did not provide sufficient evidence of the significance of Benson’s contribution to the invention as a whole to overcome the presumption that the patent named the correct inventors.
This case makes it clear that one does not attain the status of co-inventor by contributing only the sole feature of a dependent claim when that feature would be an obvious variant to a person of skill in the art in view of the invention defined by the independent claim—even when the named inventors admit that they did not invent the additional feature. This case implies, however, that patent applicants themselves may have, at least in some instances, a degree of control over whether such additionally claimed features are considered obvious or inventive. For example, the features could be described and claimed in the patent application in a manner more characteristic of a non-obvious combination: a more detailed description, the addition of a drawing of the combination, discussion of advantages obtainable by the combination, and in some cases having a more broad, product-oriented preamble for the claims. In Nartron, the invention was characterized as a control module that would work with seats having an adjustable lumbar support with an extender, yet it is possible that the Federal Circuit may have decided the case differently if the claims were directed to a seat massager (rather than the controller) and if additional attention was provided to the extender in the patent specification.
Although the facts in many patent disputes do not regularly lend themselves to defenses based on non-joinder or misjoinder of inventor, Nartron serves as a reminder of the importance of accurately naming inventors, particularly where multiple companies work together to innovate and produce new products. The case also should remind product development teams that not every team member should be named as an inventor of the team’s inventions, because one who contributes only obvious uses or product features to add to the innovation is not an inventor.