Inventorship as the Wind Blows

Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020)

Egenera’s network system architecture patent (US7231430) lists eleven inventors.  Back in 2016, Energa sued Cisco for infringement, and Cisco responded with an IPR petition.  At that point, Egenera “realized that all claim limitations had been conceived before one listed inventor, Mr. Peter Schulter, had started working there.”  Egenera’s underlying concern in the case was its ability to prove an early pre-filing invention date.

It is apparent that at least part of Egenera’s motivation to remove Mr. Schulter was to facilitate swearing behind  “Grosner,” a piece of prior art asserted against Egenera in the IPR.

Slip op.  The PTAB declined to institute the IPR, but the PTO did grant the petition to remove Shulter.

Back in the district court, Cisco argued that Shulter was actually an inventor (of the claimed tripartite structure) and that the patent was therefore invalid under pre-AIA 102(f).  At that point, Egenera suggested that Shulter be conditionally re-listed as an inventor:

The [district] court … rejected Egenera’s argument that if the trial showed Mr. Schulter to be an inventor, the patent’s inventorship should be corrected under 35 U.S.C. § 256(b). The court reasoned that judicial estoppel precluded Egenera from “resurrect[ing]” Mr. Schulter’s inventorship.

Slip Op.  The district court did subsequently determine that Shulter had conceived of the claimed structure, that Egenera was judicially estopped from adding him back as an inventor, and that the patent claims were therefore invalid.

Section 256 of the Patent Act was modified in the AIA (2011) to remove “deceptive intent” from the inventor-correction provision. The statute now allows correction of an “error” of omitting a named inventor and does not require that “such error arose without any deceptive intention on his part“.   The statute goes on to explain that the error “shall not invalidate the patent in which such error occurred if it can be corrected.”  Although Energa’s patent is a pre-AIA patent, the modification here applies to old patents.

The district court found that the removal of Mr. Shulter was a strategic and deliberate decision — and therefore not an error.  In addition, the district court found that the inventorship “tactical ploy” created an estoppel to present the second Shulter from being added back.

Regarding Error: Deliberate and calculated acts are often in error.  And the law of inventorship allows for correction of those errors — even if they were “dishonest” errors. Thus, the removal of Shulter counts as an “error” under the statute that may be corrected.

Judicial Estoppel: Judges are given some discretion in applying judicial estoppel regarding changing of arguments during litigation. However, there is a usual three-element test:

  1. Are the two positions clearly inconsistent with one another?
  2. Did the party succeed in persuading the court to accept the first position?
  3. Would the party receive an unfair advantage if not estopped?

1. Clearly Inconsistent: Originally Egenera listed Shulter as an inventor of the claims; Later they argued he should not be listed as an inventor of the same claims; finally they argued that he should be relisted as an inventor, still the same claims.  At first (and second) glance, these appear clearly inconsistent.

In reviewing these elements, the Federal Circuit found no clear inconsistency. In particular, the court explained that the district court’s claim construction and development of inventorship facts. In particular, the court had, over Egenera’s objection, interpreted a certain claim term as means-plus-function. That interpretation tied the claim to embodiments in the specification conclusively linked Shulter to the invention.  The court notes that changes in “the law” excuse inconsistency.  Since claim construction is a question of law, then it apparently serves as an excuse.

2. Acceptance of the First Position: Although the PTO accepted the change in inventorship, the Federal Circuit held that the PTO’s actions here do not serve as judicial action. Rather, the PTO did not truly examine the facts of the situation — instead it simply “agreed that all the signatures and fees were in order.”  As such, the second requirement of “persuading the court to accept” was not met.

3. Unfair Advantage: The court here could also find no unfair advantage taken by the inconsistent positions.  In particular, although Shulter was dropped in order to gain some advantage in the IPR, the IPR was actually denied before the change in inventorship was approved. Although arguments were made regarding the issue in the petition, the PTAB apparently denied the petition “without addressing Egenera’s priority arguments.”  The appellate panel writes that “Things might be different had Egenera succeeded in swearing behind the prior art. . . . But that is not this case.”

Since none of the factors point toward estoppel, the appellate panel found that it was improperly applied. On remand, the district court will need to allow inventorship to be amended and then reconsider validity and infringement.

53 thoughts on “Inventorship as the Wind Blows

  1. 11

    One law firm’s report on this case is entitled “Inventorship, Unlike a Claim, is a “Nose of Wax” ” [This analogy, to the famous line [of White v. Dunbar?] had occurred to me as well.]

  2. 10

    And in watching the Ben boys of the internet spread their misinformation notice the way they bring up the same misrepresentations over and over again. And then run when an argument insures. They blow lots of smoke and then run to the next post to copy and paste from their propaganda policy sheets they get everyday by email. They also play the game of pretending to forget everything that was ever posted.

    What a blight things like Ben are. And what a blight to allow paid posters to put out propaganda day in and day out for money. And what a blight it is to allow “academics” to post on here as if they aren’t actually paid advocates collecting a paycheck to follow the policy sheets of their employers.

    1. 10.1

      Slight correction: “to copy and paste from their propaganda policy sheets they get everyday by email

      The propaganda policy sheets do not change, thus the single (most likely laminated) copy they first receive is the same one they use day after day — no new one by email necessary.

      As for them running away – that is something that I have been pointing out like forever.

      Even the late Ned Heller (who by far was willing to engage a little bit) ran away when his sponsor’s speaking points were at legal risk (as I have noted numerous times, this site once boldly had a ‘no professional views’ policy in its oft disregarded posting rules).

      1. 10.1.1

        Be nice if there was a real effort to restore ethics to the legal community in the ethics portion of this blog rather than the joke posts that are there now.


          I have seen Prof. Hricik on a number of interactions, and he seems like a decent guy.

          So while I would not ‘tar’ him with any motive, the Ethics side of this blog is VERY weak and especially in the realm of ethics that you touch upon, is simply NOT in the narrative that has been sanctioned here.

          (shorter version: won’t happen)

    2. 10.2

      Notice below that paid-off Ben does not engage in a substantive discussion. I laid once again why a recital of function is structure in modern engineering, which every engineer worth their salt agrees with.

      Paid-off Ben, though, tries to be cute. But the paid-off Ben will continue to just copy and paste from his employer’s propaganda sheets that Ben is paid to post on this blog. The name Ben is not MM but the script is the same.

      1. 10.2.1

        Oh I hear you about the two being in the same camp, as even though Ben (near Malcolm’s end) tried to distance himself a bit, the anti-patent tendencies are from the same script.

  3. 9

    An important decision on District Court independence and discretion today: The D.C. Court of Appeals ruled 8-2 en banc against Michael Flynn and the Justice Department in their request to quickly shut down his criminal case without a hearing. Thus allowing the D.C. trial judge to question the Justice Department’s dropping of all charges against President Donald Trump’s former national security adviser after he had twice pleading guilty to lying under oath to the FBI. [I.e., at the sentencing stage, not the discretionary prosecution-decision stage.]

    1. 9.1

      Paul, the important issue “Who has control” seems to be all-important in today’s world of social media. It (“Let’s take back control”) is what decided the referendum in the UK to exit the European Union.

      In other news today, we learn that “people you’ve never heard of” are controlling Joe Biden, the subliminal message to the ordinary voters being, I suppose, that the better option is a President who has proven himself to be uncontrollable, beyond control by anybody or anything (including the Rule of Law), ever more completely out of control.

      1. 9.1.1


        It has been widely known for quite some time that Biden is not all there.

        There is nothing “subliminal” about wondering who it is that is in control behind the scenes – there is nothing ‘conspiratorial’ ** about simply connecting the dots that a power play is in motion and considering what that entails.

        ** – single quotes here because while you did not use the term, it is an implication of the terms that you did use.

        Also, since you are professed to be NOT a US citizen, I am curious as to why you are so active in our presidential discussion and why you so falsely profess some type of adoration for Rule of Law (your ‘sniff’ tendencies and pile of horse carcasses next to the well of wisdom being in sharp contrast).


          For me (both as a patent attorney, and as a private person) the Rule of Law is of huge importance. I see it non-existent or disappearing in many countries of the world. Given the esteem with which the free world holds the USA, as prime upholder of the Rule of Law, it is particularly dispiriting to see any erosion of it within the USA.


            Could agree more with you MaxDrei.

            And this blog pays a part in destroying the Rule of Law. The lack of ethics of the academics where there is no accountability but merely greed to be paid by an employer. The lack of culling the paid bloggers who post for money.

            These things erode the ethics and morals of the nation and contribute to the destruction of the Rule of Law. If Lemley can put whatever he feels like putting in a paper and then have the Scotus quote to it for a factual finding despite some of the justices questioning the validity of the paper, then we have nothing but lawless greed.

            This blog could do its part by demanding disclosures from academics and demanding that there be ethical accountability for law professors. This blog could also ban the paid bloggers whose behavior betrays their identity.


              What is hilarious is that MaxDrei crows about the importance of the Rule of Law and at the same time has been one of the longest running SHILLS in the blogosphere, with no accountability for actually taking any counter-points presented and integrating them into his spiel.

              His “of huge importance” comes across as more than shallow.

    2. 9.2

      As someone who takes perhaps too much interest in Flynn’s case, why do you think this is an “important” decision?

  4. 8

    Ben is bringing up the old misrepresentation that a recitation of function in the EE field and information processing field is not a recitation of structure. Of course those skilled in the art like me know that is false. There are large sets of known solutions and many different ways to implement functions. The only way to capture those sets is with a recitation of function. This is well understood as a ladder of abstraction and is expressly taught at the top engineering schools in the USA. I have gone to two of the top five and have cited books that state this expressly that are used at MIT.

    Ben keeps pushing the anti-patent gar bage. Another pai d off blogger that is earning money clogging up the blog.

    1. 8.1

      Books expressly say that functional language is used to capture known solutions. And you can’t just write any function you want as only functions can be written with known solutions.

      The anti-patent propaganda machine is heinous for spreading l i e s with little Bennie boy one of their biggest paid off boys.

    2. 8.2

      This is well understood as a ladder of abstraction and is expressly taught at the top engineering schools in the USA.

      A helpful caveat (for those like Greg “I Use My Real Name” DeLassus), the notion of Ladders of Abstraction A L S O has a well-known legal meaning, It is a term of art specifically for the patent law arena.

      As Night Writer alludes to, we ALL would be better off if those clogging up the blog would move on from such banal banter. There are plenty of things to discuss (including how we should be making patents stronger – any why this is such a good thing to do so).

    3. 8.3

      “Ben keeps pushing the anti-patent gar bage. Another pai d off blogger that is earning money clogging up the blog.”

      “If you have neither on your side, pound the table.”

      1. 8.3.1

        That was actually funny Ben.

        But you kind of miss the fact pounded that your posts ARE a repeat of an anti-patent script, and that prior law pounded places you squarely in the wrong.

      2. 8.3.2

        “If you have both the law and facts on your side and the paid off wh ores keep pushing li es, then pound the table.”

  5. 7

    What a joke. Just about every “processor configured to [result]” or “computing device configured to [result]” is a “black box recitation of structure”. Calling out one black box while winking at other black boxes as they pass is contemptible.

    1. 7.1

      The thing to understand is that §112(f) works on the basis of a presumption. If the claim phrase includes “means,” then §112(f) is presumed to apply, and if the phrase does not include “means,” then §112(f) is presumed not to apply.

      Now here is the part that—I find—surprisingly few people understand: “[t]he word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 254 n.8 (1981). In other words, the court is not going to address an issue on which a presumption applies unless some party raises the issue.

      It is no good blaming the court for the failure to call out “processor configured to…” or “computing device configured to… .” They cannot touch that issue unless the parties raise it. As you can see from this case, once someone raises the issue, the court is quite prepared to do right by it. So blame the right party—the litigants who fail to raise the issue.

      1. 7.1.2

        “. . . the court is not going to address an issue . . . unless some party raises the issue.”

        Unless, of course, you’re the CAFC; especially when adjudicating 101 / claims eligibility.


          I can think of only a single incidence when the CAFC raised §101 sua sponte—In re Komisky. That case was an egregious clusterf&#%, but it hardly set a new normal. Contrary to your bizarre assertion, the CAFC does not address §101 when the parties do not raise it as an issue.


            Greg — had your thought after I’d posted mine. In order to insure clarity, my intent was to point out that — once they DO have a 101 issue on their plate — they have no problem in sua sponte raising one (or more) “101 rationales” for why the claim/s at issue are (or were always — they do so love invalidating years and even decades old issued claims / patents) ineligible for patenting.

            And as we all know, they’ve also included “should consider 101” “suggestions” on some of their remand cases.

            When it comes to the CAFC and 101, there is no normal.

      2. 7.1.3

        The district court’s analysis under 112f in Egenera is not so different from that in Zeroclick v. Apple, but the CAFC cast down “logic” and blessed “program”.

        It appears that the CAFC is fine with black boxes, as long as you use the right ones. Perhaps the “right” black boxes will degrade over time into nonce words, and we’ll develop a proper euphemistic treadmill: logic, processor, chip, ordered electronic pathways, silicon, etc.

        Perhaps the reason why no one is taking these cases to the CAFC is because they know that CAFC still thinks Mass. Inst. of Tech will still carry the day.


          Except those skilled in the art know what you are saying Ben is nonsense.

          Reciting a function is about the only way to write a claim with EE inventions. And I have explained many times as the set of solutions is vast, but known.

          But keep up the good work earning extra dollars putting out those anti-patent propaganda points.


            “Reciting a function is about the only way to write a claim with EE inventions. And I have explained many times as the set of solutions is vast, but known.”

            Silly me, I forgot about 35 USC 112(z):

            An element in a claim may be expressed in whatever manner most convenient or lucrative to the inventor, without the recital of structure, material, or acts in support thereof.


              Your “without” is a pretty table here.

              Kind of the problem with attempting to say, “hey, that’s just a nonce word,” is that it IS recognized by Persons Having Ordinary Skill In The Art” that “processor configured” (or countless other ways to phrase it) IS sufficient structure.

              Also, see this little thing (coined by Prof. Crouch himself) called:

              The Vast Middle Ground.

              Hmmm, both facts AND law to pound there.


                Ben’s view of processor is pretty much a know-nothing view of what softWARE is.

                A design choice in the computing arts.

                Ben’s ‘problem’ is more existential: he does not believe that the fifth Kondratiev wave deserves patent protection.

                It is a truly bizarre view of innovation protection.

  6. 6

    The more interesting part of this case was the determination that “logic to modify” in the context of “… at least one control node including logic to modify said received messages…” is a §112(6) limitation. Not shocking, but I am not sure that I have ever seen “logic” treated as a nonce word before.

    1. 6.1

      Prior case law appears to support Greg’s points about the accused infringer having to raise and sufficiently prove sufficient structure is not recited to overcome the presumption and that “logic” in the past was seldom treated as a nonce word:


      VR Optics, LLC v. Peloton Interactive, Inc., No. 16-CV-6392 (JPO), 2018 WL 5784546, *11-*13 (S.D.N.Y. Nov. 5, 2018) (ruling that claim terms “logic configured to” and “logic” were not means-plus-function limitations, the court rejecting the accused infringer’s conclusory statement that “logic” is not structure and stated that “Peloton’s naked assertions that logic is not structure do not supplant its burden to point to ‘record evidence that supports its ultimate conclusion regarding whether § 112, ¶ 6 applies to the asserted claims,” where the accused infringer only offered attorney argument as support for its contention, instead the court finding that “the placement and use of the term ‘logic’ in the claim limitations indicates that the term connotes some specific and definite structure”)


      TecSec, Inc. v. Int’l. Business Machines Corp., 731 F.3d 1336, 1348 (Fed. Cir. 2013) (ruling that limitation “digital logic means” was not a means-plus-function limitation since one of skill in the art would know what general structure was being claimed and no function was recited − “The term ‘digital logic means’ is also not subject to § 112, ¶ 6. … In addition, the term ‘digital logic’ designates structure to skilled artisans—namely digital circuits that perform Boolean algebra. …”)

      Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (“[T]he term ‘circuit’ with an appropriate identifier such as … ‘logic,’ certainly identifies some structural meaning to one of ordinary skill in the art.” − district court erred in treating “programmed logic circuit” (and several other “circuit” limitations) as being means-plus-function limitations because the accused infringer failed to present sufficient evidence to show that the claim limitation as a whole did not recite sufficient structure to overcome the presumption that § 112, ¶ 6 and finding that the the district court erred in relying on single word in the limitation rather than looking at the limitation as a whole and all of its adjective qualifiers)

      Perhaps we are seeing in Engenera a tightening of what is required to avoid means-plus-function treatment. The Federal Circuit repeated at least three times in the opinion that “the question is not whether ‘logic’ is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.”

      In a way, Engenera’s treatment of “logic” loosely parallels the treatment of algorithms as being sufficient as corresponding structure to avoid indefiniteness. The court’s statement that “ ‘logic’ is no more than a ‘black box recitation of structure’” has similarity to “black box” concept applied in indefiniteness analyses. See e.g., Lufthansa Technik AG v. Astronics Advanced Electronic Sys. Corp., No. 2016-2535, __ Fed.Appx. __, __, 2017 WL 4711930, *2-*4 (Fed. Cir. Oct. 19, 2017) (nonprecedential) (term “control means” was indefinite since, contrary to the district court’s finding, the specification failed to disclose sufficient corresponding structure but only disclosed “black box” and vague contentions of “logic elements” – “[R]eciting a generic term for an electronic component is insufficient if an ordinary artisan would not associate the claimed component with a specific, well-known structure. Ergo Licensing, 673 F.3d at 1365.”) See generally Annotated Patent Digest § 23:19.50 — “Black Box” Disclosures for Corresponding Structure.

      1. 6.1.1

        Note the quote from this Egenera, Inc. v. Cisco Systems decision at 4.1 below. It holds that § 112(f) applies, and also that the specification [not just the claim element] is also devoid of any structure for the subject alleged means-function-equivalent [aka nonce word] claim expression. Per the noted case law, that should logically lead to a holding of “claim indefiniteness” here rather than just to the § 112(f) limitation of claim scope to a corresponding specification description or equivalents thereof. [It should logically also lead to a §112(a) non-enablement defense?]


          Er, no. The CAFC quite clearly concluded that the specification disclosed structure corresponding to the claimed function. Slip op. at 13, “The district court concluded that the structure corre- sponding to the first function was ‘virtual LAN server 335, virtual LAN proxy 340, and physical LAN driver 345’… The parties call this the ‘tripartite struc- ture.’” Slip op. at 14, “ We… find the district court’s… reasoning persuasive on the merits. The components of the tripartite structure… function in concert to modify messages to transmit to the external communications network.”


            ? Greg, that is what the District court said about that, apparently in agreeing about claim construction for the first function, but on p. 12 the Fed. Cir. said “ the claims AND SPECIFICATION provide no structural limitation to the “inputs, outputs, connections, and operation” of the claimed “logic to modify.” [emphasis provided]


              It is difficult to reconcile your proposed of the page 12 portion with the court’s assertion on page 14 that “the tripartite structure… function in concert to modify messages to transmit to the external communications network.” I believe that the right way to understand the page 12 assertion that “the claims and specification provide no structural limitation” is not that the spec does not disclose adequate supporting structure. Rather, the way I read that portion is that there is nothing in the spec to suggest that “logic” should be read to convey something more than its plain and ordinary meaning.

    1. 4.1

      Good observation. From the decision:
      “ the claims and specification provide no structural limitation to the “inputs, outputs, connections, and operation”
      of the claimed “logic to modify.”.. § 112(f) applies here. As used,“logic” is no more than a “black box recitation of structure” that is simply a generic substitute for “means.” See Williamson, 792 F.3d at 1350. “

  7. 3

    If a judgement is overturned interlocutory appeal, perhaps our procedural rules should require that the case be remanded to another judge automatically, unless the parties agree otherwise.

    1. 3.1

      This was a reversed final decision on invalidity on one issue, [not an interlocutory appeal] and judges would object to the waste of time and effort in reassigning such a case to another judge to start from scratch.

  8. 2

    As a practical matter, the case is now returned for trial to a judge who may well have formed an unfavorable opinion of one party’s attorneys for this flip-flop, judging by the decision, so these inventorship changes may not be entirely free of indirect consequences.
    Also, is this another example of not fully coordinating everything argued in IPRs with the parallel D.C. litigation? Especially since the odds of successfully “swearing behind” a prior art reference in an IPR or other contested case proceeding are low.

  9. 1

    Who was the very first person in the patent blogosphere to question why the AIA was removing the ‘deceptive intent’ provisions?

    That’s right – this guy.

    1. 1.1

      Both the removal of “such error arose without any deceptive intention on his part” for inventor corrections and removing absence of “best mode” spec. disclosures as a litigation defense were PRO-patent-owner provisions put in the AIA to remove subjective and fact-intensive patent enforcement litigation issues making patents harder to judicially enforce. [The PTO itself almost never challenged either.]

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