Despite Efforts to Add Inventor, Patent Not Invalid for Nonjoinder
June 08, 2001
Last Month at the Federal Circuit - July 2001
Judges: Rader (author), Michel, and Linn
In AcroMed Corp. v. Sofamor Danek Group, Inc., No. 00-1163 (Fed. Cir. June 8, 2001), the Federal Circuit affirmed a district court’s decision granting JMOL that a first patent was not invalid for improper inventorship and upholding a jury verdict finding all asserted claims of two patents literally infringed and not invalid.
In the early 1980s, Dr. Arthur Steffee developed systems to straighten a patient’s spine. His systems fastened long plates to the patient’s vertebrae using bone screws. In 1982, he conceived of certain improvements to his thenexisting plate-and-screw system. Working with Steffee, machinist Frank Janson fabricated the improved plate-and-screw system. Additionally, Janson solved a critical problem, identified by Steffee, related to fixing the relative positions of the plates and screws in the improved system.
In 1983, Steffee cofounded AcroMed Corporation (“AcroMed”). As the sole-named inventor of U.S. Patent Nos. 4,696,290 (“the ’290 patent”) and 4,854,311 (“the ’311 patent”), he assigned his rights in both patents to AcroMed. The ’290 patent claimed the improved plate-andscrew system, while the ’311 patent claimed a related bone screw.
Janson worked for and with AcroMed from 1988 until 1994. In 1993, AcroMed sued Sofamor Danek Group, Inc. and Danek Medical, Inc. (collectively “Danek”) in the U.S. District Court for the Northern District of Ohio for infringement of the ’290 and ’311 patents. At about the time Janson left AcroMed in 1994, he met with Danek’s counsel. Later that year, Janson refused AcroMed’s request to sign both a declaration and power of attorney adding him as a coinventor of the ’290 patent and to assign his rights in the ’290 patent to AcroMed. Instead, in 1995, he assigned his rights in the ’290 patent to Danek.
After the trial for infringement of the ’290 and ’311 patents, the district court had granted JMOL that the ’290 patent was not invalid for improper inventorship. Additionally, the jury verdict had found all asserted claims of both patents literally infringed and not invalid, found willful infringement of the ’290 patent, and awarded damages. The district court then denied three motions for JMOL by Danek.
On appeal, the Federal Circuit addressed each of Danek’s JMOL motions. First, the Court found that, despite AcroMed’s failed attempt to belatedly add Janson as coinventor of the ’290 patent, Danek had not presented clear and convincing evidence of nonjoinder. Second, regarding the ’311 patent, the Federal Circuit upheld the district court’s relatively broad construction of key means-plus-function claim language, thus finding sufficient evidence to support the jury verdict of literal infringement. Third, based upon evidence put forth by AcroMed and the Federal Circuit’s interpretation of specific means-plus-function claim language, the Court found insufficient evidence that a prior art patent anticipated the ’311 patent. Based upon these findings, the Federal Circuit affirmed the district court’s decision.