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Joint Inventor Must Make a Qualitatively Significant Contribution When Measured Against the Dimension of the Full Invention

March 05, 2009
Tull, Susan Y.

Decision icon Decision

Last Month at the Federal Circuit - April 2009

Judges: Lourie (author), Dyk, Prost

[Appealed from: E.D. Mich., Senior Judge Zatkoff]

In Nartron Corp. v. Schukra U.S.A., Inc., No. 08-1363 (Fed. Cir. Mar. 5, 2009), the Federal Circuit reversed and remanded the district court’s grant of SJ of dismissal for nonjoinder, which concluded that an extender element of a dependent claim had been invented by a third party not named on the patent or joined as a plaintiff to the infringement suit.

Nartron Corporation (“Nartron”) owns U.S. Patent No. 6,049,748 (“the ’748 patent”), which is directed to a vehicle control system that provides massage capability to a vehicle seat with lumbar support. Defendant Schukra U.S.A., Incorporated (“Schukra”) supplies automobile manufacturers with lumbar support systems for automobile seats. Defendant Borg Indak, Incorporated (“Borg Indak”) supplies electronic components to Schukra. Borg Indak moved for SJ of dismissal, alleging that Benson, a Schukra employee, was a coinventor of claim 11 of the ’748 patent and therefore had to have been joined in the suit. Because the district court found that Benson conceived of the key additional limitation in dependent claim 11, an extender for a lumbar support adjustor, it held that Benson was a coinventor. As a coinventor, Benson was required to have been joined as a plaintiff to the infringement suit. Accordingly, the district court dismissed the suit.

On appeal, Nartron argued that the extender recited in claim 11 was in the prior art and therefore could not have supported a claim of coinventorship. Nartron further argued that the inventive aspect of the claimed invention is the controller, which Benson did not conceive. Thus, Nartron argued, irrespective of whether the extender was in the prior art, Benson’s alleged contribution is insignificant to the invention of the ’748 patent.

The Federal Circuit agreed with Nartron that Benson was not, as a result of suggesting an extender, a coinventor of claim 11 of the ’748 patent as a matter of law. The Court concluded that any contribution Benson made to the invention was insignificant and therefore prevented Benson from attaining the status of coinventor. The Court reminded that “a joint inventor must ‘contribute in some significant manner to the conception or reduction to practice of the invention [and] 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.’” Slip op. at 7-8 (alteration in original) (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)).

In concluding that the contribution of the extender for a lumbar support adjustor was insignificant when measured against the full dimension of the invention of claim 11, the Court found that extenders were not only known in the art but also were part of existing automobile seats. Benson’s contribution of supplying the extender to the patented invention therefore was merely the exercise of ordinary skill in the art. To support its view, the Court looked to the specification of the ’748 patent, which makes clear that the automobile seat, including its lumbar support adjustor and extender, comprises the existing object on which the invention (i.e., the control module) operates. The Court also found that the specification and claims do not focus on the structure of the seat itself, but rather on the structure and function of the control module that operated the seat. The ’748 patent, for example, mentions the extender only once and contains no description of the physical characteristics of the extender or any drawing of the extender.

In holding that Benson’s contribution to the ’748 patent did not rise to the level of coinventorship, the Court applied its reasoning from a factually similar case, Hess v. Advanced Cardiovascular Systems, Inc., 106 F.3d 976 (Fed. Cir. 1997). In Hess, the Court held that Hess was not a coinventor when he had explained the state of the art to the inventors and had suggested that the inventors use a particular material in their product. The Court also noted that Benson “does not necessarily attain the status of coinventor by providing the sole feature of a dependent claim.” Slip op. at 11. The Court reminded that “a dependent claim adding one claim limitation to a parent claim is still a claim to the invention of the parent claim, albeit with the added feature; it is not a claim to the added feature alone.” Id.

The Court also rejected the argument that Benson must be a coinventor of the module because he suggested a control module to the named inventor and detailed the ultimate functions of that module. The Court reminded that “[o ]ne who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor.” Id. at 12 (alteration in original) (quoting Garrett Corp. v. United States, 422 F.2d 874, 881 (Ct. Cl. 1970)). Accordingly, the Court concluded that Benson was not entitled to coinventorship by simply posing the result, leaving the named inventors to figure out how to achieve it.