In Plastipak Decision, CAFC Fails to Resolve Precedential Inconsistency in Inventorship Determination

“Making a significant contribution toward conception establishes inventorship under both Burroughs and Pannu, but making a significant contribution toward reduction to practice appears to solidly qualify a person as an inventor only under Pannu and seemingly not under Burroughs.”

In Plastipak Packaging Inc. v. Premium Waters Inc., Appeal No. 2021-2244, decided December 19, 2022, the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) newest judge threw a curveball on the topic of inventorship. Judge Leonard Stark wrote the precedential opinion, joined by Judges Newman and Stoll, and ultimately reversed and remanded the U.S. District Court for the Western District of Wisconsin’s grant of summary judgment in favor of Premium Waters, Inc. Plastipak’s 12 patents in suit generally had to deal with unfinished plastic bottles as used during manufacturing.

Inventorship was at issue because the patentee had contracted with a third party for development of the plastic bottles. Without getting too much into details that are not directly relevant here, an individual from the third-party contractor alleged that he helped design a critical aspect of the bottles, which then resulted in the patents in suit.

CAFC Ignores Inconsistency on Inventorship

In the process of setting forth its opinion, the Federal Circuit first states (page 11 of the slip opinion) that to be a joint inventor one must: (1) contribute in some 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 that contribution is measured against the dimension of the full invention; and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art, citing Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). And indeed, this is the standard Pannu articulates – you’re an inventor either by significantly contributing to conception or by significantly contributing to reduction to practice.

But then the decision observes seven pages later that “conception is the touch-stone of inventorship,” citing Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). This is precisely what Burroughs states. In fact, Burroughs further observes that “[c]onception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation,” appearing to distinguish conception (which equals inventorship) from reduction to practice (which apparently does not). Although Pannu was decided several years after Burroughs, Pannu did not cite Burroughs. Sensing that clarity is not the friend of taking a stand, the Plastipak author just tossed them both in without identifying the seeming inconsistency.

Problem Not Solved

So, which is it? Clearly, making a significant contribution toward conception establishes inventorship under both Burroughs and Pannu, but making a significant contribution toward reduction to practice appears to solidly qualify a person as an inventor only under Pannu and seemingly not under Burroughs.

If there is a post-Pannu case that resolves the ambiguity of the inventorship standard between Burroughs and Pannu, Plastipak isn’t it.

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John M. Rogitz John Rogitz is currently the Managing Attorney at Rogitz & Associates, and he serves on the Executive Committee of the IP Section of the California Lawyers Association. As Managing Attorney [...see more]

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Join the Discussion

2 comments so far.

Jeffrey Sheldon
January 4, 2023 02:58 pm
My book (“How to Write A Patent Application, PLI) states:
It is usually safest to include too many inventors rather than too few inventors. There is a presumption that the listing of inventors in an issued patent is correct. It is less likely that a judge or jury would invalidate a patent because, by mistake, an extra person was given credit for an invention, than if a true inventor were left out. Moreover, the left-out true inventor is more likely to give unfavorable testimony during litigation. However, there is a disadvantage in being overinclusive in identifying inventors. By including a person as an inventor who most likely should not have been identified as an inventor, that person’s testimony is lost as a collaborating witness as to conception and reduction to practice. Also, there is a positive correlation between the number of inventors listed (from one inventor to three or more) and the likelihood of getting a patent. (There is no claim of cause and effect.)
TFCFM
January 4, 2023 11:31 am
>>JMR>>So, which is it? Clearly, making a significant contribution toward conception establishes inventorship under both Burroughs and Pannu, but making a significant contribution toward reduction to practice appears to solidly qualify a person as an inventor only under Pannu and seemingly not under Burroughs.<<JMR<<

Not so fast. I don't think the Federal Circuit is even trying to address this distinction here.

Even under Pannu, inventorship achieved through contribution to RTP requires that an inventor "do more than merely explain to the real inventors well-known concepts and/or the current state of the art."

Keep in mind that this case was a review of a summary judgement and therefore MUST be reversed if a reasonable jury COULD find the portion of Pannu quoted above to be true in this case.

Here, the Federal Circuit appears to have held only that a dispute about material facts existed for each of the two potential contributions* that the disputed-inventor allegedly made (regardless of whether they are considered contributions to "conception" or "RTP").

*(1. Discontinuous TEF was, reasonably disputably, within the state of the art. 2. Disputed-inventor might reasonably be found-by-the-jury NOT to have contributed claimed "X" dimension.)

I don't read the court's citation of Burroughs (or of Lilly v. Aradigm; each on p. 18 of the slip opinion) as disqualifying any alleged inventive contribution because it relates to RTP, rather than to "conception-separate-from-RTP." Instead, the court seems simply to be emphasizing that "contributing" what is already in the art in a straight-forward manner is not an "inventive" contribution that merits inventorship.

FWIW, my opinion — not here tethered to precedent — is that if one (a "conceptor") has "conceived" an invention (in the conversational English-language sense) but cannot reduce it to practice, then the conceptor has not "conceived" the invention in the patent-law sense ("a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice"). If the conceptor later learns (whether independently or through another) that the "conceived" invention CAN be reduced to practice within the scope of the then-current art, then the conceptor has — at the time of such learning — completed "conception" of the invention in the patent-law sense (because he now knows how to actually practice the invention). One who merely teaches the conceptor that his conception is currently-make-able using bog-standard methods/materials does not thereby become an "inventor" in the patent-law sense.

The dispute in this case appears to me to center around the factual dispute of whether the person who taught the conceptor(s) of the claimed invention some information about how to make it taught them

i) only what-was-already-known, thereby rendering the teacher a mere fabricator, or

ii) something beyond what-was-already-known, thereby rendering the teacher a co-inventor.

It seems to me that the court held that a reasonable factual dispute exists between "i)" and "ii)", precluding the lower court from holding "ii)" on summary judgement.