Co-Inventors Contribution Must Be “More Than The Exercise of Ordinary Skill”

Oren Tavory v. NTP (Fed. Cir. 2008)(nonprecedential)

In March 2006, RIM settled its patent dispute with NTP for $600 million+. In the wake of that settlement, Tavory filed an inventorship claim against NTP arguing that he was a co-inventor of at least one of the NTP patents. The district court dismissed the case – finding that Tavory did not provide “sufficient independent evidence to corroborate his inventorship allegations.” On appeal, the Federal Circuit affirmed in NTP’s favor.

Back in the late 1980’s and early 1990’s Tavory worked with Tom Campana as a computer programmer for Telefind. While there, Tavory developed a computer program to facilitate an e-mail-to-pager system. He was also part of a team that created the pager-to-laptop e-mail system. Telefind ran out of money in 1991 and Tavory left for greener pastures. When Don Stout later filed Campana’s patent applications, he appended a copy of the code that Tavory had co-authored. During the RIM trial, Tavory testified for NTP. At that time, he did not claim inventorship.

Correcting Inventorship: An issued patent is presumed to name the correct inventors. Thus, an inventorship challenge must bring “clear and convincing evidence” that the newly surfaced inventor “contributed to the conception of the claimed invention.” “Simply reducing to practice that which has been conceived by others is insufficient for co-inventorship.” Under the clear and convincing standard, the inventorship challenge “must be corroborated by independent evidence.”

Contribution Must Be “More Than The Exercise of Ordinary Skill”: Tavory suggested that his contribution was the claimed “interface switch.” However, the Federal Circuit rejected that claim because (1) Tavory did not prove that the “interface switch itself was not in the prior art”; and (2) Tavory likewise did not prove that “his alleged contribution to the claimed invention—the interface switch—was the result of anything more than the exercise of ordinary skill in the art.” Consequently, “he has failed to establish co-inventorship.”

Judge Newman concurred with this result, but would have decided the case on laches (based on the long delay in making the claim) and estoppel (based on Tavory’s silence during the NTP trial).

 

41 thoughts on “Co-Inventors Contribution Must Be “More Than The Exercise of Ordinary Skill”

  1. Yes, but who’s ordinary skill? Are clever people to be denied a patent, because the skill which for them is “ordinary” is actually extra-ordinary ie above-average? If not, and it’s the PHOSITA, who is going to decide what level of skill is “ordinary” or “average” in that particular esoteric technical field that is the subject of the patent dispute, be it telecoms or biotech. But stop. I know the answer: the good burghers busy deliberating in the jury room. What sort of a legal system is it, that deliberately imposes on people, as a matter of routine, a civic duty that they are hopelessly unequipped to discharge? A cynical one, I would say, that pays lip service to the sanctity of the “Rule of Law” but in reality weakens it, to the detriment of all. Parties in dispute should settle rather than litigate, of course, but for the reason that the outcome (were they to litigate) is already clear, and not because it’s going to be a lottery who wins. Every dissent at CAFC level is evidence that the system’s broken.

  2. The idea that inventive activity must be more than the exercise of ordinary skill has been around for a while. See Hess v. Advanced Cardiovascular Sys., Inc.

  3. Dear AllSeeingEye:

    Could an actual inventor’s not documenting an alleged co-inventor’s “contribution” attest to that contribution’s lack of inventive content?

    For example, if a person only identifies a solution from the prior art or alerts the actual inventor of the state of the art, this is not inventive (regardless of how helpful). The actual inventor probably wouldn’t record this because its not a step above and beyond the prior art.

  4. At least the Germans document in German (or more likely these days English). Which would your client prefer to discover; that, or the documentation they create in Japan, Korea and China. Are you getting many interferences yet, between a US inventor and one in China?

  5. Luke,

    Good science works EXACTLY like that. We call it documenting your results. I suppose you envision science as just puttering around in a lab? Great work if you can find someone to fund it.

    For better or worse, and by that I mean for better, we here in the U.S. diligently record the results of our work for publication purposes, whether or not patents are contemplated (which they generally are if someone is funding the research). Its not difficult to see that the practice of documenting work is not unique to the U.S. (the Germans, for example, are notoriously diligent documentors).

    I guess that leaves you standing alone with your pants around your ankles practicing your unique brand of undocumented “science.”

  6. This entire problem could have been avoided if they had rightly rejected the NTP patents in the first place. They’re ALL obvious.

  7. I think that the question for INVENTORSHIP is whether someone contributed to the CONCEPTION of one or more claims. Conception, as I understand it is forming a “definite and permanent” idea that requires only ordinary skill to reduce to practice.

    However, when a collaborator conceives of a part of a claim that is not necessarily an inventive step but is nonetheless important to the invention as a whole that person is probably not an inventor because merely identifying something in the prior art or supplying the actual inventor with a description of the prior art does not make one an inventor. (Ethicon case at CAFC from 1996).

    Does this mean that we evaluate the co-inventors contribution from the standpoint of the patentability of that contribution in order to determine whether it, alone, is patentable? If not, what is the relevant inquiry for determining whether a potential co-inventor’s contribution is sufficient to give rise to co-inventorship?

  8. For another discussion of PHOSITA wrt obviousness, please see DAIICHI SANKYO CO., LTD. and DAIICHI SANKYO, INC. v. APOTEX, INC. and APOTEX CORP. (Fed. Cir. 06-1564r).

  9. Two questions:

    1) How should this case be treated by the patent bar given that it is ‘non-precedential’?

    2) I seem to remember there being an issue long ago particularly among Japanese applications filed here, because that culture dictated that the inventor’s bosses were typically included on applications as inventors also (out of respect to the supervisor)- and that the US/PTO and the Japanese came to some kind of resolution back in the 80’s or 90’s that wouldn’t invalidate all of their patents – does anyone have more on this (or have the courts looked at it or is this urban legend)?

  10. Two questions:

    1) How should this case be treated by the patent bar given that it is ‘non-precedential’?

    2) I seem to remember there being an issue long ago particularly among Japanese applications filed here, because that culture dictated that the inventor’s bosses were typically included on applications as inventors also (out of respect to the supervisor)- and that the US/PTO and the Japanese came to some kind of resolution back in the 80’s or 90’s that wouldn’t invalidate all of their patents – does anyone have more on this (or have the courts looked at it or is this urban legend)?

  11. In the current political environment, I can give prediction of first-office-action obviousness that also is 90%+ right. You don’t even need to show me the refs….

    “Claims 1-… are rejected under 103 as obvious over (non-analogous art) in view of (reference that expressly teaches away) based on ordinary skill in the art as demonstrated by (inaccurate pinpoint cite to 300-page textbook).”

    How’s that do ya?

  12. “In fact, many would argue that, for close calls, it’s a waste of time to base filing decisions on what an examiner might determine is obvious since predicting examiner behavior is very difficult.”

    If you already know the refs then I can give you a prediction that is 90%+ right. examiner6k@yahoo.com should you require my services.

  13. Roger, +your+ education level is irrelevant.

    The relevant level of education is that of a +hypothetical+ person referred to as a “person having ordinary skill in the art.” This level of skill is mentioned in the statute governing obviousness (35 USC 103) basically states that a claim is obvious if the claimed subject matter “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Among different arts, the level of ordinary skill may vary. For example, in some biotech arts, phd’s are ordinary, but in some mechanical arts, a lower degree of education or experience may be ordinary.

    As a practical matter, I have never seen a patent examiner specify, much less include in any analysis, the level of ordinary skill in a rejection from the patent office. They merely state that something is obvious to a PHOSITA and then leave it at that. Accordingly, it’s really a waste of time to base filing decisions on what the level of ordinary skill is.

    In fact, many would argue that, for close calls, it’s a waste of time to base filing decisions on what an examiner might determine is obvious since predicting examiner behavior is very difficult.

    In the end, you really need to find an experienced, good patent attorney or agent to help you identify potentially patentable ideas and draft an application describing and claiming those ideas.

  14. Luke, you write that a) “science” doesn’t work like that, and b)the sooner US patent law recognises that fact the better. Not sure whether I agree with your “sooner the better” proposition. To my mind: 1) “science” is a sub-set of “the world” and 2) it’s not altogether a bad thing that US patent law doesn’t recognise how “the world” works. For one thing, the rest of the world, everywhere except for the USA, can quietly get on and further harmonise its patent law, without being obliged to listen to the promptings of any US Government representative. Better the present two cleanly different patent systems in the world, both internally coherent, than one foul world-wide compromise. Then, if and when the US eventually joins the club, it will be signing in (for the benefit of the US public) to a settled logical body of law, easily understandable by engineers and scientists, that even politicians will all support, as soon as they grasp that the harmonised patent law is nurturing the public policy objective of having a patent system in the first place.

  15. j wrote “Not sure how it works in the computer world, but in science we document everything with a date (some even make copies of their notebooks) in the event our inventorship is ever called into question”.

    Speak for yourself. This may be true of a) some institutions involved in “science” (typically those that are purely commercial operators) and b) in the USA. But in more typical scientific settings, most people are not concerned with inventions per se at all, let alone patents, to say nothing of the more obscure aspects of American patent law that encourage such practices. Every time I hear some American patent attorney give a talk about how important it is to get people to counter-sign lab-books I want to pull my hair out.

    Do you and they really expect the scientific world to alter their behaviour on the vague off-chance that their work may at some point be patented (which of course the massive majority of research is not), in the US (because such inventorship issues are pretty well-much irrelevant everywhere else), *and* be involved in an inventorship dispute?

    Science simply doesn’t work like that, and the sooner US patent law recognizes the fact the better.

    Cheers, Luke

  16. Thanks for the reference! That was very instructive.

    So accoding to Environmental Designs, my education level is taken into account, which means that it seems that I have a higher burden of proof for proving nonobviousness.

  17. Factors that may be considered in determining level of ordinary skill in the art include-

    the educational level of the inventor;
    type of problems encountered in the art;
    prior art solutions to those problems;
    rapidity with which innovations are made;
    sophistication of the technology; and
    educational level of active workers in the field.

    Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).

  18. True, I haven’t applied for any patents yet because prosecution is out of the range of person with ordinary amount of money. I’ve been reviewing the KSR vs. Teleflex decisions and also the patent examiner training guidelines. From an inventor’s perspective, it seems that little is nonobvious.

    So, the question is how does one arrive at this PHOSITA? There are various skill levels of art in the world. Who counts as ordinary? The MIT professor? Is it obvious if they didn’t think about it, although they could have?

  19. I can’t say I “require” documentary proof, but I urge that some sort of documentary proof be available if inventorship comes into question. This is usually enough to scare off the faint of heart (like asking an Examiner for an affidavit to support Official Notice).

  20. “As an inventor, I am confounded by this “more than the ordinary skill” criterion. It would seem to reason that everything I invent falls within my “ordinary skills.” In addition, parts of an invention may fall within the ordinary skills of two or more ordinary scientists, although each scientist may not have the skills to understand the whole invention.”

    It’s not YOUR ordinary skills or those of any particular inventor that are pertinent, but rather those of a PHOSITA – a hypothetical person like, similar to the reasonable prudent person, which does not in fact exist. It is an objective standard.

  21. “It would seem to reason that everything I invent falls within my “ordinary skills.””

    That’s because you’re not inventing and why you recieve 103 rejections.

  22. Dear John,

    … And if claims are amended or a sibling application is filed, inventorship should again be reviewed.

  23. As an inventor, I am confounded by this “more than the ordinary skill” criterion. It would seem to reason that everything I invent falls within my “ordinary skills.” In addition, parts of an invention may fall within the ordinary skills of two or more ordinary scientists, although each scientist may not have the skills to understand the whole invention.

  24. Dear John,

    Here’s my ordinary advice: Take your best shot and carefully review with an eye to making an amendment as may be required prior to the issuance of the patent.

  25. Not being an attorney, but a PHOSITA, I thought that the safer route was to name too many inventors, rather than miss one. Am I wrong?

    Conversely, I always thought the easiest route to invalidate a patent would be to identify a missing inventor. In any corporation, I can guarentee that there is a disgruntled employee who feels he was unfairly cut out of a patent. Finding him would not be too difficult. Is this routinely done?

  26. The Eye makes a good point about aliens sometimes having “political” difficulty naming the right inventors. But all the difficulties fall away, when one mentions the draconian consequences for the US patent rights, of naming anything but the 100% correct inventorship entity. The interesting thing is, in the “normal” case of all potential inventor names being those of contracted employees of the Applicant company, why should some third party be able to render the patent unenforceable, just because of a close decision inside the company to name just 2 employees as the inventors, and not the marginal 3rd contributer. It’s not proportionate, is it? What is important is that the PTO issues the monopoly only to the rightful owner. That’s why Europe provides for the patent to be revoked when that is not the case, but only upon a petition from the rightful owner.

  27. “However reminding the inventor team of the requirements of U.S. law and requiring some documentary proof is usually enough to discourage piling on of inventors.”

    You require your clients to provide documentary proof of inventorship? Of what sort? I thought the declaration was documentary proof…

  28. Attribution of inventorship is always politically difficult – particularly for foreign applicants who have egalitarian cultures and who favor team development approaches. However reminding the inventor team of the requirements of U.S. law and requiring some documentary proof is usually enough to discourage piling on of inventors.

  29. “http://answers.yahoo.com/question/index?qid=20080209154345AAxk9mI”

    You should take the time to put one thumb down. So far, it’s 17 to 4, discluded stands. I’m in your language changin your words.

  30. OK, I’ll bite…

    Is this a subtle follow-up to the “patent agent as NOT an inventor” arguement because what a patent agent does is an exercise of ordinary skill (albeit a different skill – that of law)?

  31. …perhaps opening up another defendant avenue of attack on patent validity in that large percentage (a majority?) of patents with multiple “inventors?”

    How often are folks added as inventors simply to avoid hurt feelings among all those who may have–even in a tangential way–“had a hand” in the invention?

    Thoughts on this from current or past in house counsel…or those who know?

  32. “I agree. At least 50%. For inventions with >3 inventors, the percentage is probably closer to 80%.”

    It’s actually 100%, because everything was invented by Michael R. Thomas.

  33. “I would guess that in the majority of patents naming multiple inventors, at least one of the inventors did not contribute something non-obvious.”

    I agree. At least 50%. For inventions with >3 inventors, the percentage is probably closer to 80%.

  34. This sort of thing makes naming the correct inventors extremely difficult. We have to identify not only all who were present in helping conceive the invention, but also whose contributions were non-obvious.

    I would guess that in the majority of patents naming multiple inventors, at least one of the inventors did not contribute something non-obvious.

  35. “Newman said nothing about whether Tavory was actually an inventor.”

    That’s exactly the point. The court should avoid unnecessary ramblings about inventorship if they are not required to dispose of the case.

  36. Not sure how it works in the computer world, but in science we document everything with a date (some even make copies of their notebooks) in the event our inventorship is ever called into question.

    I’m surprised that co-authoring doesn’t count insofar as patentability is concerned. It’s too bad Tavory never spoke up initially.

  37. JAOI,

    Congratulations. You’ve given e6k’s post more review than his SPE has ever given his OA’s.

    Though to be fair, I’m sure his post makes more sense than any of his OA’s. Which in this case is not much. (I’m a generous reviewer.)

  38. Yes, all who hold the patent system sacred should agree with Newman. Holding that one has to perform something greater than an ordinary artisan would be doing exersizing ordinary skill wipes out nearly 99% of patents instantly. Flash of Genius Test anyone?

    Funniest thing is, if you do have to contribute more than the exercise of ordinary skill then the orginaly inventor should be discluded from being an inventor on these particular ones.

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