Federal Circuit Upholds District Court’s View That Omission of Coinventor Invalidates Patent

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit (CAFC), with Judge Lourie writing, issued a precedential decision today affirming a district court’s grant of summary judgment holding two patents invalid for omitting a coinventor.

Fortress Iron LP owns U.S. Patents 9,790,707 (“the ’707 patent”) and 10,883,290, which are both titled “Vertical Cable Rail Barrier.” The final designs for the inventions covered by the two patents were conceived by two Fortress employees and two employees of Fortress’ quality control liaison, Quan Zhou Yoddex Building Material Co., Ltd (YD).

Fortress sued Digger Specialties Inc. for patent infringement in January 2021 and during the course of the litigation Digger learned that the two YD employees, Hua-Ping Huang and Alfonso Lin, contributed to the invention and Fortress sought to add them as coinventors under 35 U.S.C. § 256(a). Lin was successfully added, however, Fortress could not locate Huang and therefore he was never added. Fortress and Digger filed cross-motions for summary judgment and the court ultimately granted Digger’s motion for summary judgment of invalidity due to incorrect inventorship and denied Fortress’s motion for partial summary judgment to correct the two patents by adding Huang.

On appeal to the CAFC, Fortress argued that the district court erred in “concluding that Huang was a ‘party concerned’ under § 256(b) and therefore entitled to notice and an opportunity to be heard before the court could order any correction of inventorship.” Fortress contended that the court should not consider Huang a “party concerned” because adding him as an inventor would only benefit, not adversely affect, him. Fortress also argued that Huang would not have constitutional standing to sue if he sought to name himself as a coinventor.

The Federal Circuit disagreed on both counts, explaining that “[i]nventors occupy the central role in the patent process. They are where it all begins, even if they eventually assign their interests to others, such as employers. Thus, their explicit references in the statutory framework cannot be taken lightly.” As an “agreed-upon omitted coinventor,” Huang is a “party concerned” under the statute and must be given notice and opportunity for hearing before any correction of inventorship can take place, said the CAFC.

While Fortress argued it was unable to contact Huang and its inability to do so should not deprive it of a valid patent, the opinion said that “§ 256(b) makes those procedural protections a prerequisite to relief, not a mere formality.” Fortress’s argument that Huang should not be considered a “party concerned” because he would not be adversely affected by being added as coinventor was unsupported, said the CAFC, because such an interpretation would essentially rewrite the statute from “party concerned” to “those with an economic interest that may be adversely affected”. Furthermore, neither the courts nor Fortress knows whether or not Huang would be adversely affected or benefit from being added as a coinventor. Fortress’s argument regarding constitutional standing also fails because constitutional standing and “party concerned” are “distinct issues with different requirements.”

With respect to Fortress’s argument that the district court should have construed Section 256(b) broadly in order to stay true to its role as a “savings provision” for a patent’s validity, the CAFC said “Section 256 is a ‘savings provision’ only to the extent that its statutory requirements are met.” The denial of Fortress’s motion for partial summary judgment to correct inventorship was therefore affirmed.

Turning next to the district court’s grant of Digger’s motion for summary judgment of invalidity, the CAFC held that the district court was correct to find, under Section 101, that the patents were invalid due to incorrect inventorship. The opinion explained:

“Section 256(b) states that ‘[t]he error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected.’ (emphasis added). The necessary and opposite implication of § 256(b) is that a patent is invalid for the error of omitting inventors when that error cannot be corrected.”

While Fortress argued that only one true inventor needs to be named on a patent under the statute, due to the “permissive” language of Section 101, the CAFC noted this would render the “savings provision” of Section 256(b) meaningless. “[Section] 101 and § 100(f), when read together with § 256(b), contemplate that when an invention has multiple inventors, they must all be listed on the patent,” said the CAFC. “‘Whoever’ does not mean less than all.”

Fortress lastly attempted to argue that the repeal of Section 102(f) following the America invents Act supports the idea that joint inventors need not be named for a patent to be valid, but the CAFC said that Section 102(f) simply stated that “non-inventors are not entitled to a patent, not that actual inventors need not be named on a patent.”

Thus, because Huang is a coinventor and he is not listed on the patent, the patents are invalid for incorrect inventorship.