Bitcoin Mining Patent Retains Original Inventorship

In Bearbox LLC v. Lancium LLC, No. 2023-1922 (Fed. Cir. January 13, 2025), the Federal Circuit affirmed, among other things, the district court’s (1) determination that BearBox had not met its burden to establish sole or joint inventorship of Lancium’s U.S. Patent No. 10,608,433 (the “’433 patent”) and (2) grant of summary judgment dismissing BearBox’s state law conversion claim as preempted by federal patent law.

The ’433 patent claims a “behind-the-meter” system connected to a wind farm that mines cryptocurrency when the price of electricity is low and sells power to the energy grid when the price of electricity is high. Bearbox’s owner asserted that he should be an inventor on the ’433 patent because of a conversation and subsequent email thread he had with Lancium personnel. The Federal Circuit, however, affirmed the district court’s determination that Bearbox did not prove inventorship by clear and convincing evidence because the conversation and email thread with Lancium occurred after the ’433 patent was filed. 

As to BearBox’s state law conversion claim, the Federal Circuit affirmed the district court’s dismissal because the state law claim, as pleaded, used “patent-like” language that amounted to inventorship and patent infringement causes of action. The Federal Circuit also determined that the preemption finding was appropriate because BearBox sought “patent-like” damages (e.g., disgorgement of profits and royalties) instead of conversion-based damages (e.g., the return or value of the converted property).