Amendment of § 256 Removed Previous Prohibition on Deceptive Intent

With the AIA, Congress amended § 256 to remove the requirement that the “error” of omitting an inventor from a patent must occur without “deceptive intention.” That is not to say that such a deceptive intention would be free from an inequitable conduct charge, but, at least for purposes of the administrative correction, intent is no longer a consideration of the agency.

Few cases have explored the impact of this amendment, until Egenera, Inc. v. Cisco Systems, Inc, which held the correction —and unraveling of the same correction —is not prevented by the amended statute.

As a reminder, the revised statute now reads:

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

In Egenera, Inc. v. Cisco Systems, Inc., (here) the Federal Circuit had to decide whether this amendment changed the meaning of the word “error,” and whether Egenera could correct inventorship.

Before the USPTO, Egenera successfully petitioned to remove an inventor from a patent to help prove an earlier pre-filing invention date. Then, at district court, Egenera attempted to conditionally add the inventor back if the district court construed a claim limitation to be an MPF term (Egenera argued that it was not a MPF term) because the removed inventor had conceived of the claimed structure. The district court disagreed with Egenera’s proposed construction and found that the claim limitation was an MPF term, and the court further rejected Egenera’s argument that the inventorship should be corrected under § 256 because Egenera was judicially estopped from doing so due to its earlier petition to remove the inventor. Egenera appealed the court’s application of judicial estoppel, and, among other issues, the Federal Circuit had to decide whether Egenera could correct inventorship under § 256 after the AIA amended the statute.

Under Federal Circuit precedent, “error” includes “all varieties of mistakes—honest and dishonest,” not just unintentional inaccuracy. Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1554-56 (Fed. Cir. 1997). Cisco argued that removing the requirement that the “error arose without any deceptive intention” excluded intentional inaccuracy entirely because the removal “harmonize[d] ‘error’ with . . . [its] plain meaning—one that excludes intentional inaccuracy.”

The Federal Circuit rejected Cisco’s interpretation

because it is contrary to the text of § 256, the structure of the AIA, and the AIA’s legislative history. We hold that the AIA did not narrow the meaning of “error.” Accordingly, § 256 does not exclude “considered acts,” or even “deceptive intention,” from the meaning of “error.” “Error” is simply the incorrect listing of inventors.

For legislative support of its interpretation, the court cited a statement made by Senator Kyl on the Congressional Record: “Eliminating the various deceptive-intent requirements moves the U.S. patent system away from the 19th century model that focused on the patent owner’s subjective intent, and towards a more objective-evidence-based system that will be much cheaper to litigate and more efficient to administer.”

While the change certainly simplifies the role of the agency by removing subjective intent from the statute, I am not sure it simplifies litigation. As the Court pointed out, “inequitable conduct” is the safety valve for combating abusive practices.