Print PDF

Contradictory Declarations of Inventorship Prevent SJ of Invalidity

June 20, 2005

Decision icon Decision

Last Month at the Federal Circuit - July 2005

Judges: Schall (author), Michel, and Dyk

In Checkpoint Systems, Inc. v. All-Tag Security S.A., No. 04-1395 (Fed. Cir. June 20, 2005), the Federal Circuit reversed a district court’s grant of All-Tag Security S.A. and All-Tag Security Americas, Inc. (collectively “All-Tag”), and Sensormatic Electronics Corporation’s (“Sensormatic”) motion for SJ dismissing Checkpoint Systems, Inc.’s (“Checkpoint”) claims of infringement of U.S. Patent No. 4,876,555 (“the ‘555 patent”) based on improper inventorship, and remanded for a new trial.

The ’555 patent is directed to a resonance label for attaching to merchandise in department stores and a method of making it. The ‘555 patent issued from an application that was filed in 1988 (“the ‘468 application”), which claimed priority to an earlier filed Swiss patent application by Durgo AG (“Durgo”), a Swiss company contracted to supply resonance labels to another Swiss company, Actron. Checkpoint contracted to supply resonance labels to Actron in the 1980s, which terminated in November 1986. The ‘468 application was assigned to Durgo and named Paul Jorgenson, an independent technical consultant for Durgo, Actron, and All-Tag, as the sole inventor. Durgo was acquired by Actron in January 1989, and Actron was acquired by Checkpoint in November 1995, making Checkpoint the owner of the ’555 patent that had issued from the ‘468 application in the interim. In May 2001, Checkpoint brought suit against All-Tag and Sensormatic for infringement of the ‘555 patent.

At the district court, the parties disputed the validity of the ‘555 patent under 35 U.S.C. § 102(f) for failure to properly list all inventors. Defendants argued that Franz Pichl, who was at the time managing director of Actron as well as a part owner of Actron and Durgo, is an unnamed joint inventor of the ‘555 patent. Defendants relied on declarations made in 2002 in preparation for this litigation from Jorgenson, Pichl, and Geiges, an associate of Pichl at Durgo, which stated that the resonance label that is the subject of the ‘555 patent was jointly developed by Jorgenson and Pichl. The declarations further indicated that Pichl was intentionally not included on the ‘468 application to avoid letting competitor Checkpoint claim ownership rights by virtue of the contractual relationship between Actron and Checkpoint, and Pichl’s affiliation with Actron.

In granting Defendants’ motion for SJ of invalidity, the district court relied on the 2002 declarations by Jorgenson and Pichl as undisputed evidence that clearly showed that the ’555 patent was jointly invented by Pichl and Jorgenson, and concluded that if the ‘555 patent is invalid to one, it is invalid to all.

The Federal Circuit found that SJ in favor of Defendants was improper because the evidence relating to the matter critical for determining whether the ‘555 patent was invalid for improper inventorship was contradictory. Because there remains a genuine issue of material fact as to whether Jorgenson was the sole inventor of the resonance label claimed in the ‘555 patent or whether Jorgenson and Pichl were joint inventors of the resonance label, the district court’s grant of SJ was reversed. In particular, the declarations from the PTO and from this litigation were flatly contradictory as to inventorship. Accordingly, the Federal Circuit vacated and remanded to the district court for factual findings on the inventorship issue.