Irwin Indus. Tool Co. v. Bibow Indus., Inc., C.A. No. 11-30023-DPW, 2012 WL 5420033 (D. Mass. Nov. 6, 2012) (Woodlock, D.J.) [Inventorship]

The District Court (Woodlock, D.J.) granted summary judgment confirming the patent-in-suit was not invalid for failure to name a co-inventor and also dismissed counterclaims related to inventorship issues.

Plaintiff Irwin Industrial Tool Company, which does business as Lenox ("Lenox"), brought a declaratory judgment action to establish the validity of three patents. The action was brought after Defendants Bibow Industries, Inc. and Christopher W. Bibow (collectively, "Defendants") asserted that Christopher Bibow, the president and owner of Bibow Industries, Inc., should have been a co-inventor on the three patents. The three patents, U.S. Patent Nos. 7,373,947 ("the ‘947 patent"), 7,415,988 ("the ‘988 patent"), and 7,195,031 ("the ‘031 patent), relate to small oxy-acetylene tanks, so-called "hand torches."

Each of the three patents lists three inventors, all of whom were Lenox employees at the time of conception and none of whom was Christopher Bibow. Mr. Bibow, in fact, was never an employee of Lenox, but he did communicate about intellectual property with various employees of Lenox, the parent company of Lenox, and the parent company’s related subsidiaries. Mr. Bibow indicated he was comfortable sharing his intellectual property in these communications because he had filed his own materials with the United States Patent and Trademark Office prior to any such communications.

Defendants argued that Mr. Bibow was an inventor based on several discussions he had with one of the three inventors prior to the filing of the patent applications. Defendants further argued that Mr. Bibow contributed to three inventive elements of the patents at issue during his discussions. The Court, however, disagreed.

The Court found that, even in a light most favorable to Defendants, Mr. Bibow’s contributions with respect to the three inventive elements, in fact, were not inventive. The Court determined Mr. Bibow merely provided information to Lenox’s inventor regarding existing art, i.e., Mr. Bibow’s own previously filed patents. For all three of Lenox’s patents, the patentees made the USPTO aware of Mr. Bibow’s prior art, and yet the PTO granted the claims. The Court saw this, coupled with other factors, as a clear indication that Mr. Bibow’s contributions were not inventive.

As a result, the Court granted Lenox’s summary judgment motion, confirming the patent was not invalid on the basis of failing to name a co-inventor. The Court also dismissed Defendants’ two remaining counterclaims—to name Mr. Bibow as a co-inventor and to invalidate the patents due to fraud on the patent office for failing to name all of the inventors—because it determined Bibow was not a co-inventor. No further issues remain in front of the Court.