An important change made in the America Invents Act of 2011 was to allow patent owners to file for patent protection as patent applicants rather than relying upon sometimes uncooperative inventors to do so. However, the AIA did not make any changes to the ever-present rule that ownership stems from invention and thus initially vests in the inventors. Because ownership is tied to invention, inventorship disputes remain a part of patent law even under this new regime.
Meng v. Chu (Fed. Cir. 2016) focuses on two superconductivity patents purportedly owned by the University of Houston based upon assignment from the listed inventor Prof. Ching-Wu Chu. I discussed this case previously in my post titled: Can you Wait 20-Years to Challenge Inventorship?: In this case, Yes, Patently-O (November 15, 2012). In its 2012 decision, the Federal Circuit rejected the lower court’s conclusion that the challenger (Meng & Hor) claims were barred by laches or equitable estoppel. A difficulty with the case is that the patents were filed in the 1980’s but did not issue until 2006 and 2010 respectively. Meng & Hor worked with Chu during the research, but were not listed as inventors.
In the remand, the district court held an eight day bench trial on the inventorship claims and ultimately rejected both Meng & Hor’s claims – finding (1) that Meng had failed to show that her contribution exceeded the ordinary skill in the art; and (2) that Hor had not provided sufficient corroborating evidence so as to overcome the clear-and-convincing standard required for correcting inventorship. On appeal here, the Federal Circuit has affirmed.
In order to prevail on a § 256 claim, an alleged co-inventor must show that he contributed to the conception of the claimed invention and that his contribution was “not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Acromed Corp. v. Sofamor Danek Grp., 253 F.3d 1371 (Fed. Cir. 2001). An alleged co-inventor’s testimony regarding his contribution must be corroborated, which courts assess under a “rule of reason” analysis. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998).
Here, the Federal Circuit reviewed the evidence presented and agreed that it was ambiguous at best. As such it was insufficient to overcome the ‘heavy burden.’
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 As most patent attorneys know, the old rules provided a mechanism for an owner to file for patent protection on behalf of an uncooperative or unavailable inventor. However, that model is different than the rights-holder filing on its own behalf.
 See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237 (Fed. Cir. 1993).
 U.S. Patent Nos. 7,709,418 (“’418 patent”) and 7,056,866 (“’866 patent”).
 See Hor v. Chu, No. 4:08-CV-3584, 2015 WL 269123 (S.D. Tex. Jan. 21, 2015) and Hor v. Chu, 765 F. Supp. 2d 903, 906 (S.D. Tex. 2011), aff’d in part, rev’d in part and remanded, Hor v. Chu, 699 F.3d 1331 (Fed. Cir. 2012).