Inventorship: “Conclusory and Self-Serving Testimony is Insufficient”

Gregory James v. J2 Cloud Services (Fed. Cir. 2020)

James filed this change-of-inventorship lawsuit against the patent owner (Advanced Messaging Tech.). James alleged that he was the sole inventor of U.S. Patent No. 6,208,638 and that his name should replace that of Jaye Muller and Jack Rieley.

The listed inventors – Rieley and Muller are famous in the music world.  Rieley was the Beach Boy’s manager in the 1970s and co-wrote many songs with them as part of their “revival.” Muller (“J”) is a German musician.  In the 1990s, the pair started a company known as JFAX.  The company – now known as J2 – has a $2.6B market cap.  The company’s original idea was to receive VM and faxes via email.

After forming the company, Rieley & Muller hired James to build out a prototype, which he did.  But, the patent doesn’t list James.

James asserts that the JFAX system is his invention. James also claims that the JFAX system is the inventions claimed in the ’638 patent and that Muller and Rieley wrongfully secured a patent on that system.

The district court sided with J2 — and the Federal Circuit has affirmed. In particular, the court ruled that James’s claim of invention was not supported by sufficient documentary evidence.

[T]he evidence that James points to does not support his claim that he conceived the inventions in the ’638 patent. James testified that (1) he believed he was the “sole inventor of the technology claimed in the ’638 patent,” and (2) when he looked at the patent he realized
“that’s exactly what [he] invented,” Such conclusory and self-serving testimony is insufficient to survive a motion for summary judgment.

Affirmed. [Nonprecedential]

= = = =

1. A system comprising:

a set of switches coupled to a circuit switched network for receiving a set of incoming call signals, wherein the incoming call signal includes an inbound address, and wherein a switch in the set of switches redirects an incoming can signal from a first communications server to a second communications server if a first condition occurs; and,

a set of communications servers coupled to the set of switches for receiving the set of incoming call signals, each communications server being coupled to a network and containing a message processing resource configured to process a received audio message into a digital representation, wherein each communications server further comprises a trunk line interface to extract the inbound address and stores the inbound address, a set of final destination addresses and account status, and the message processing resource is further configured to determine, based on the inbound address, a user account and a destination on a packet switched network and send the digital representation to the destination,

wherein the inbound address is assigned to the user account and the outbound address comprises at least one email address.

8 thoughts on “Inventorship: “Conclusory and Self-Serving Testimony is Insufficient”

  1. 3

    OT, but also about evidence, is FanDuel, Inc. v. Interactive Games LLC yesterday, in which a split Federal Circuit upheld a USPTO IPR decision that FanDuel failed to prove Interactive Games’s claim 6 was obvious. Pointing out that just because the Petitioner submitted enough evidence to start an IPR does not mean it has enough evidence to win, as the burdens are different and the burden to win remains on the petitioner even if the patent owner itself never submitted any rebuttal evidence.

  2. 2

    Unfortunate for James; for it’s hard to imagine that this complex-at-the-time patent would have been possible without his apparent critical, material, substantial contribution and involvement in the creation of this nice, highly-useful invention.

    At the very least, he should have been listed as one of the inventors.

    If only he’d just come forward earlier . . .

    I haven’t checked for any litigation involving this patent; anyone have any thoughts on why being named on an expired (or soon to be) patent would be worth what had to be a reasonably expensive effort?

    1. 2.1

      Sorry for the misplaced comment @ 1.1: Perhaps the value lay in the state law claims?

    2. 2.2

      You got all that from the bare assertion?

      Mind you, being the ‘mere mechanic’ that puts the inputs together into a prototype MAY involve some serious changes to the inputs and render SOME status of inventor, but that is not apparent at a high level of read; instead, the fact that he wants ALL the credit appears to paint him in a rather BAD light.

      1. 2.2.1

        “You got all that from the bare assertion?”

        Not at all, my friend. Instead, I got that from reading the patent and considering the technical knowledge / experience / professional backgrounds of the three parties involved in this conflict.

        “the fact that he wants ALL the credit appears to paint him in a rather BAD light.”

        I concur; and hence my: “At the very least, he should have been listed as one of the inventors.”

  3. 1

    Dennis, your hotlink to this case is to “Pacer” not the Fed. Cir.
    The very longstanding evidentiary rule that uncorroborated testimony of the alleged inventor is insufficient for an inventorship challenge is in interesting parallel to the “clear and convincing evidence” rule for D.C. patent invalidity evidence in general. But, it also applies in PTO interference proceedings, and presumably will apply in AIA PTO derivation proceedings if any ever get that far.

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