Court Dismisses Claims Over Wang’s Application

Posted on | August 7, 2008 | No Comments

2008-1496 Saint Gobain v. Wang
D/MA 07-cv-40129
Judge F. Dennis Saylor, IV

Plaintiff Saint Gobain Ceramics & Plastics appeals from Judge F. Dennis Saylor’s dismissal of its claims regarding ownership of a pending patent application for lack of subject matter jurisdiction.

Wang was a former employee of Saint Gobain.  After leaving he went to defendant Planar Solutions where he filed a patent application with a co-inventor–allegedly on something that he invented, by himself, while at Saint Gobain.  Saint Gobain filed suit, alleging a various state law claims as well as claims to strike the co-inventor from the application.

Wang moved to dismiss the case, arguing that the district court did not have subject matter jurisdiction over a claim to change inventorship of a pending application.  The court summarized the patent laws on correcting inventorship:

The law generally requires that all joint inventors be listed on a patent application. See 35 U.S.C. § 116. Two federal statutes govern disputes as to patent inventorship. The first, 35 U.S.C. § 256, provides:

Whenever through error a person is named in an issued patent as the inventor, or through error is not named in an issued patent and such error arose without any deceptive intention on his part, [the PTO shall correct the error]. . . . The court before which such matter is called into question may order correction of the patent on notice and hearing of all parties concerned and [the PTO] shall issue a certificate accordingly.

Id. (emphasis added). This statute explicitly contemplates a role for the federal courts in hearing inventorship disputes concerning issued patents.

In contrast, 35 U.S.C. § 116 provides as follows:

Whenever through error a person in named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the [PTO] may permit the application to be amended accordingly, under such terms as he prescribes.

Id. (emphasis added). Notably, the latter statute does not mention the availability of judicial relief.

Thus, on their face  § 256 addresses "issued patents" while  § 116 covers "applications." 

The court noted a split in authorities–in Federal Circuit, regional circuit, and district court cases–as to whether  § 116 created a right of action in the courts.  Ultimately, however, the court found that while an inventorship dispute over an application "arose under the Patent laws," it did not state a cause of action for the federal courts:

The Court finds the view expressed in Simonton and Sagoma Plastics persuasive—that is, while the Court has subject-matter jurisdiction under § 1338(a) to hear a pending patent inventorship claim, § 116 does not provide a private right of action for such a claim. The standard for subject-matter jurisdiction under Christianson is whether “plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” Christianson, 486 U.S. at 808-809. This test is “lenient,” U.S. Valves, 212 F.3d at 1372, and the Court agrees with the authorities that have held a pending patent inventorship claim meets its requirements. See, e.g., Simonton, 2008 WL 901797 at *6; Concrete Washout Sys., 2005 WL 1683930 at *4; Sagoma Plastics, 366 F. Supp. 2d at 189; Heineken, 103 F. Supp. 2d at 478-80; Duke Univ., 2006 WL 267185 at *4; but see DuPont, 344 F.3d at 583-84.

The court likewise declined to change the inventorship on the pending PCT application, distinguishing Chou v. Univ. of Chicago because, in that case, the US patent had already issued and inventorship determined by the court under § 256.

This language [from Chou] clearly limits a district court’s ability to correct pending PCT inventorship claims to situations where a court has already determined the inventorship of an issued United States patent. Inventorship on PCT applications “normally follows the inventorship designation in the originating country.” Id. Because the inventorship designation on the United States patent at issue in this case has not yet been settled (and cannot be settled by this Court while the United States application is pending) the Court has no basis upon which to correct the pending PCT application.

The court then declined to exercise jurisdiction over the state law claims and dismissed.

More reading:

Opinion

Counsel:

Saint Gobain: Lowrie, Lando and Anastasi, LLP, Cambridge, MA (Matthew B. Lowrie, Thomas P. McNulty).

Wang: Dwyer & Collora LLP, Boston (Daniel J. Cloherty).

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