by Dennis Crouch
The recent decision in Beriont v. GTE Labs offers some further thoughts on the employee-employer relationship. Up-front, I should note that Mr. Beriont has represented himself pro-se in this litigation and that may have resulted in his eventual loss here.
Mr. Beriont is a former GTE engineer who conceived of an improved device for optical-to-RF signal conversion back in 1996 and worked with another GTE employee (Bellows) to reduce that invention to practice – creating a working model. Later that year Beriont was fired for being a trouble-maker in ways apparently unrelated to the invention in question. However, GTE determined that the idea had merit and has (apparently) incorporated it into products and also filed for patent protection. U.S. Patent No. 5,920,802.
The patent was filed with Beriont’s partial cooperation. By partial-cooperation, I mean that Beriont signed the declaration of inventorship but refused to sign the document assigning rights in the patent to GTE. The other listed inventor – Bellows – did assign his rights.
State Court Action: Hoping to quiet title over the patent rights, GTE filed a declaratory judgment action in Massachusetts state court seeking a judgment that the company was the sole owner. That case resulted in an eventual settlement with a $50,000 payment to Beroint and an agreement that the parties “shall be joint owners” of the patent.
Federal Court Action: Meanwhile, Beriont also sued in federal court seeking a declaration that Beriont was the sole-inventor and that GTE infringed the patent. Following the state-court settlement district court dismissed that case on summary judgment. On appeal here, the Federal Circuit has affirmed.
On Inventorship, once a patent issues the courts apply a presumption that the listed inventorship is correct and can only be modified based upon clear and convincing evidence otherwise – something the courts have identified as a “heavy burden.” In particular, the moving party must prove that inventors being excluded did not contribute to the invention of any of the allowed claims. On summary judgment, the district court had disregarded Beriont’s testimony as not sufficient to meet that burden. And, on appeal, the Federal Circuit agreed – finding that an inventor’s testimony regarding conception must be corroborated in order to overcome the burden. [This is an obvious failure that a patent litigator would not have missed.]
On Infringement. With the co-ownership agreed upon in the state court now confirmed on appeal, each co-owner has full right to make use of the invention. Thus, GTE’s use of the invention cannot be infringing. Further, because the court here confirmed that inventorship (and therefore GTE’s ownership claim) was correct since issuance, there are no potential back-damages.