Omitted Inventor Denies Plaintiff Standing To Sue

Posted on | May 21, 2008 | No Comments

2008-1363 Nartron Corp. v. Schukra USA
ED/MI 06-cv-10683

Nartron appeals from Judge Lawrence Zatkoff’s order granting summary judgment to defendant on lack of standing.  Nartron sued Borg Indak alleging infringement of 6,049,748 directed to electronic controls for automotive seats with massage and lumbar support features.  On summary judgment the court found that one of Schukra’s former employees, Benson, was also an inventor and should have been named on the patent.  Since Benson had not consented to or joined in the suit, the lawsuit was not brought by all owners of the patent and Nartron thus lacked standing to bring the action.

Background:  In the mid-1990s Schukra and Thermo-O-Disk developed a lumbar support system with massage features for use in automotive seats.  They presented the idea to Delphi and Cadillac, who offered to purchase these seat massager units if it could meet certain requirements and be production-ready in time for the next model year.  Because Therm-O-Disk could not meet these requirements, Schukra turned to Nartron.

Nartron completed the project (which included designing the control module) and became a supplier to Schukra and Cadillac.  Nartron also filed a patent application in 2000, with three of its employees listed as the inventors.  The supplier relationship remained for several years until Schukra replaced Nartron with Borg Indak.  After being replaced, Nartron filed suit.

Omitted Inventor:  The court first noted that the presumption is that Benson was not an inventor, and Schukra needed to prove he was by clear and convincing evidence.  Further, Benson’s own testimony, by itself, is insufficient to meet this standard.  The court summarized what Benson must show:

A purported joint inventor must show that he made “a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, . . .” Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). . . . Each inventor must generally contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). . . however, “for the conception of a joint invention, each of the joint inventors need not ‘make the same type or amount of contribution to the invention.’ 35 U.S.C. § 116. Rather, each needs to perform only a part of the task which produces the invention.” Id. In other words, “a coinventor need not make a contribution to every claim of a patent. See 35 U.S.C. §116. A contribution to one element of one claim is enough.” Ethicon, 135 F.3d at 1460.

Schukra claimed that Benson was a co-inventor of claim 11, which reads:

11. The invention as defined in claim 6 wherein said lumbar support adjustor includes an extender.  [Emphasis by PATracer.]

Nartron first argued that the italicized language–Benson’s alleged contribution–did not actually reflect part of the invention described in the ’748.  The court easily rejected this argument, noting not only the claim language itself but also that the specification and other parts of the ’748 clearly state that it was part of the "invention."

The court next found ample, unrebutted evidence that Benson contributed at least the italicized part of the invention.  Several memoranda and documents dating back to 1994 showed Benson working on lumbar support structures.  Also, testimony from other at Schukra, Delphi and Therm-O-Disk support Benson’s claim.  Further, each of the named inventors admitted that they did not invent, conceive, or reduce to practice any of the mechanical elements of the seat, including the lumbar support structure or extender.

The court also rejected Nartron’s argument that these items were well known in the art–there was no real evidence of this, plus the court found that plaintiff’s decision to write the claims as it did effectively precluded the argument.

Nartron lastly argued that Benson must show that he contributed to, and is a co-inventor of, one of the independent claims.  The court found no authority for this argument.

Notes: Although the court invoked § 256 and said that it could add Benson as an inventor to the ’748, I did not see any wording in an order that it should be done, nor any instruction to the PTO Director to issue a certificate.  Further, § 256 requires that there be no deceptive intent by the person omitted–while the court clearly did not believe that Benson had acted deceptively, there is no specific or explicit finding to that effect. 

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Order on Summary Judgment 

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