{"id":2897,"date":"2020-08-28T15:17:20","date_gmt":"2020-08-28T20:17:20","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2897"},"modified":"2020-08-29T12:53:16","modified_gmt":"2020-08-29T17:53:16","slug":"inventorship-unlike-a-claim-is-a-nose-of-wax","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2897","title":{"rendered":"Inventorship, Unlike a Claim, is a “Nose of Wax”"},"content":{"rendered":"\n

In Egenera, Inc. v. Cisco Systems, Inc.<\/a><\/em>, [2019-2015, 2019-2387] (August 28, 2020), the Federal Circuit affirmed the district court\u2019s claim construction but vacated the invalidity judgment of U.S. Patent No. 7,231,430, based on judicial estoppel and remanded for further proceedings.<\/p>\n\n\n\n

Prior to claim construction, during an inter partes review proceeding, Egenera separately petitioned the USPTO to remove one of the eleven listed inventors from the \u2019430 patent (the presence of the inventor prevented Egenera from antedating the cited prior art). Following the district court\u2019s claim construction and a trial on inventorship, Egenera asked the district court to add the removed inventor back to the patent (because the removed inventor was found to have conceived one of the claim limitations. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the \u2019430 patent invalid for failing to name all inventors.<\/p>\n\n\n\n

The Patent Act allows a listing of inventors to be corrected either upon petition to the Director (35 U.S.C.\u00a7 256(a)), or upon court order, see \u00a7256(b)), and a patent cannot be invalidated if inventorship can be corrected instead. The Federal Circuit noted that its precedent provides that \u201cerror\u201d in \u00a7256 includes \u201call varieties of mistakes\u2014honest and dishonest\u201d\u2014rather than only unintentional inaccuracy. \u00a7 256 is a savings provision, functioning to prevent invalidation when correction is available; it is the inequitable-conduct rules that provide a safety valve in the event of deceit.<\/p>\n\n\n\n

The Federal Circuit held that \u00a7256 does not exclude \u201cconsidered acts,\u201d or even \u201cdeceptive intention,\u201d from the meaning of \u201cerror.\u201d \u201cError\u201d is simply the incorrect listing of inventors.<\/p>\n\n\n\n

The district court here concluded that Egenera was judicially es-topped from adding Mr. Schulter\u2019s name back to the patent after it held a trial establishing him to be an inventor\u2014thereby invalidating the patent for improper inventorship. Judicial estoppel is an equitable doctrine that prevents a litigant from taking a litigation position inconsistent with one successfully asserted in an earlier court proceeding. The purpose of the doctrine is to protect the integrity of the judicial process. A a court examines (1) whether a party\u2019s earlier and later positions are \u201cclearly inconsistent\u201d\u2014that is, \u201cmutually exclusive\u201d; (2) whether the party \u201csucceeded in persuading a court to accept\u201d the earlier position; and (3) whether the party would \u201cderive an unfair advantage or impose an unfair detriment\u201d on the other side if not estopped.<\/p>\n\n\n\n

Because inventorship is a complex legal conclusion that depends on claim construction, once claim construction was performed, the Federal Circuit found that it was not inconsistent to correct inventorship after the claims were construed. Thus, the district court erred in determining that the first factor of clearly inconsistent positions was met.<\/p>\n\n\n\n

The Federal Circuit also found that Engera did not meet the second factor, persuading the court to accept its earlier position. The Federal Circuit observed that no persuasion was involved in getting the USPTO to remove the inventor. Finally the Federal Circuit found no unfair advantage to Engera. <\/p>\n\n\n\n

Concluding that the district court legally erred as to each factor, the Federal Circuit held that the district court abused its discretion by applying judicial estoppel, vacating the district court\u2019s invalidity judgment and the accompanying cost award, and remanding for further proceedings. <\/p>\n","protected":false},"excerpt":{"rendered":"

In Egenera, Inc. v. Cisco Systems, Inc., [2019-2015, 2019-2387] (August 28, 2020), the Federal Circuit affirmed the district court\u2019s claim construction but vacated the invalidity judgment of U.S. Patent No. 7,231,430, based on judicial estoppel and remanded for further proceedings. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[29],"tags":[],"class_list":["post-2897","post","type-post","status-publish","format-standard","hentry","category-inventorship"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2897","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2897"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2897\/revisions"}],"predecessor-version":[{"id":2899,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2897\/revisions\/2899"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2897"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2897"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2897"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}