Who’s Your Inventor?: Contradictory Declarations Leads to Summary Judgment Reversal

ScreenShot016Checkpoint Systems v. All-Tag Security  (Fed. Cir. 2005).

by Marcus Thymian.

Checkpoint asserted its patent on disposable, deactivatable security labels against All-Tag and Sensormatic, a customer of All-Tag.  The district court granted summary judgment of invalidity to All-Tag and Sensormatic under 35 U.S.C.  § 102(f) for failing to name an inventor.  In support of its motion for summary judgment, All-Tag had submitted recent declarations of three people, including the named inventor and the supposed omitted inventor, stating that the sole named inventor was one of two actual inventors.

The Federal Circuit reversed and remanded, agreeing with Checkpoint that earlier declarations by the same three people, made during prosecution, contradicted the more recent declaration, thus creating a “clear” genuine issue of material fact on the issue of inventorship.

The Court frames several issues that are potentially more interesting than the main inventorship issue, but declines to rule on those issues, given its reversal.  These issues include:  (1) applicability of the doctrine of assignor estoppel to a party that is merely in privity with the assignor; (2) applicability of the corroboration rule to testimony by inventors/assignors challenging validity; and (3) whether 35 U.S.C. § 256 (allowing the patent office to correct inventorship upon application of the parties/assignees) could be used to correct inventorship, if it were found to be incorrect in this case.

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Concentrating primarily on the electrical, software, and mechanical arts, he is experienced in planning, creating, enforcing, and defending against patent portfolios. [Marcus Thymian’s Bio]

[Copyright 2005 – Originally published at www.patentlyo.com]