Contribution of Elements of Invention Used to Distinguish Invention from Prior Art Is Sufficient for Inventorship

In Blue Gentian, LLC v. Tristar Products, Inc., No.2021-2316 (Fed. Cir. June 9, 2023), the Federal Circuit affirmed a district court’s judgement regarding correction of inventorship under 35 U.S.C. § 256.

Blue Gentian sued Tristar for infringement of several design and utility patents related to an expandable hose. Tristar counterclaimed to correct inventorship of all the patents to include Mr. Ragner as a named inventor. Tristar argued that during Mr. Ragner’s demonstration of an expandable hose prototype, Mr. Berardi, the sole named inventor on each patent, asked whether he could replace a wire spring, which forces the hose to retract after expanding, with elastic. Mr. Ragner responded that his earlier protypes had a surgical tube inside the hose that forced the hose to retract. Soon after the demonstration, Mr. Berardi filed a patent application for an expandable hose with an inner elastic tube. After an evidentiary hearing, the district court determined that Mr. Ragner should have been a named inventor on all asserted patents. Blue Gentian appealed.

On appeal, the Federal Circuit agreed with the district court that Mr. Ragner had contributed three key elements towards the conception of at least one claim in each patent. The court determined that all three elements were reflected in the patent’s claims and were used to distinguish the claimed inventions from the prior art. The Court also found that Mr. Ragner’s testimony was adequately corroborated through his knowledge of expandable hoses and documentary evidence predating the demonstration. Finally, the Court found that the confidential information and technical details Mr. Ragner discussed with Mr. Berardi regarding expandable hose designs were sufficient to show collaboration and that Mr. Ragner did not need to be intent on inventing the full invention ultimately claimed before he started collaborating.