The U.S. Court of Appeals for the Federal Circuit recently re-affirmed the law as it pertains to co-inventorship, holding that merely proposing the inclusion of relevant prior art elements in an invention is an insignificant contribution that does not rise to the level of inventive contribution. Nartron Corporation v. Schukra U.S.A., Inc., Case No. 08-1363 (Fed. Cir., Feb. 5, 2009) (Lourie, J.).
In 1996 Nartron Corporation was hired by Schukra to design a control system to provide existing automobile seats with massage functionality. Nartron designed the control system and patented the device. Subsequently, Nartron sued Indak, a supplier of electronic components to Schukra, for contributory infringement of the patent claims directed to a control module for a seat control with an adjustable lumbar support that optionally includes an extender. Indak moved for summary judgment of dismissal, alleging that an employee of Schukra was a co-inventor who had not been named on the patent and was, therefore, a necessary party to the suit who had not been joined.
Co-inventorship by the Schukra employee was based on his non-contested suggestion to include an extender for the seat’s lumbar support, although the employee admitted that the use of extenders in lumbar supports for automobile suits was known in the prior art. The district court granted Indak’s motion for summary judgment of dismissal, holding that the Schukra employee was a co-inventor and, as such, was required to be joined as a party to the infringement suit. In reaching its decision to dismiss, the district court relied on the employee’s evidence that he had independently designed a lumbar support extender that provided a massage effect, although the specification merely disclosed the basic concept of a lumbar support and extender.
On appeal, Nartron established that the lumbar support and extender cited in the claims were in the prior art, while the invention was the development of the controller that operates on an automobile seat and causes the seat parts to move in a manner to provide a massage. The Court held that the Schukra employee’s contribution to the invention was insignificant when measured against the full dimension of the invention, because the extender was a part of the prior art relevant to automobile seats and, therefore, its inclusion in the invention amounted to no more than “the basic exercise of ordinary skill in the art.”
Practice Note: Nartron stands for the well-established proposition that an inventor must make a significant contribution to the conception or reduction to practice of the claimed invention, and that providing no more than an explanation of concepts that are well known in the current state of the art is not an inventive act.