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Court Broadens Claim Scope and Remands on Inventorship Issue

August 01, 2002

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Last Month at the Federal Circuit - September 2002

Judges: Linn (author), Bryson, and Michel (dissenting)

In Trovan, Ltd. v. Sokymat SA, No. 01-1360 (Fed. Cir. Aug. 1, 2002), the Federal Circuit vacated the district court’s decision that Ake Gustafson, an employee of Sokymat SA (“Sokymat”), is not a coinventor of U.S. Patent No. 5,281,855 (“the ’855 patent”), assigned to Trovan, Ltd. (“Trovan”), and remanded the case for further determination of the inventorship issue.

In the late 1980s, Trovan began designing a process for the production of passive transponders. Trovan hired the services of Sokymat, a Swiss watch manufacturer headed by Gustafson, to optimize the production of the transponders. As fruit of its design efforts, Trovan obtained the ‘855 patent, which lists Leonard Hadden and Glen Zirbes as the inventors. Sokymat also obtained a patent, U.S. Patent No. 5,572,410 (“the ’410 patent”), which lists Gustafson as the sole inventor. Both patents relate to transponders that comprise a small coil winding having wire leads attached to a chip.

In response to Trovan’s suit for infringement of the ‘855 patent, Sokymat alleged that Gustafson is a coinventor, and thus co-owner, of the ‘855 patent. Trovan also alleged that Hadden and Zirbes were the actual inventors of the ’410 patent, and, thus, Trovan owns the ’410 patent. The district had found that Hadden and Zirbes were not inventors of the ‘410 patent, a decision that Trovan did not appeal. The district court had also found that Gustafson failed to provide sufficient evidence that he contributed to the conception of the claimed invention in the ’855 patent, which Sokymat appealed.

On appeal, Sokymat argued that because Gustafson was named the sole inventor of the ’410 patent and because the ’410 and ’855 patents have overlapping subject matter, Gustafson is at least a coinventor of the ’855 patent. The Federal Circuit rejected this, concluding that Sokymat cannot rely on Trovan’s failure to meet its burden of proof on the issue of inventorship of the ‘410 patent to satisfy its burden to prove that Gustafson is a coinventor of the ‘855 patent. The Court indicated, however, that an examination of Gustafson’s inventive efforts toward the ‘410 patent may be probative regarding whether he invented certain features of the ‘855 patent.

Sokymat then argued that Gustafson conceived and reduced to practice the wire-support feature of claims 5 and 9 of the ’855 patent. To determine the inventorship, the Federal Circuit first construed the claims at issue, a task the district court had failed to do. The Court concluded that the plain language of claim 5 requires that the wire leads provide at least some support for the silicon substrate, but not necessarily all the support, and that the wire leads be connected directly to the chip.

While Gustafson’s reduction to practice was clear from the record, his conception of the invention of claims 5 and 9 was not. The Federal Circuit determined that the evidence in the record showing conception blurred the two concepts of (1) directly connecting wire leads to the chip and (2) providing at least some support for the chip by the wire leads. The blurring of these two concepts, the Federal Circuit determined, led the district court’s factfinding to be inconclusive on whether Gustafson contributed to the wire-support feature.

Therefore, the Federal Circuit remanded the case to determine who first conceived the wire-support feature of claims 5 and 9, as well as to determine whether Gustafson first conceived of thermalcompression bonding features of certain claims.

Judge Michel, dissenting, read the requirement of “sole support” in claims 5 and 9 in view of the specification, which explains that for some applications, it may be possible to dispense with the support means and depend entirely upon the wires for support.