Reasonable Stories of Inventorship

by Dennis Crouch

Patents filed before March 2013 are examined using the pre-AIA rules of patentability, including 35 U.S.C. 102(f):

A person shall be entitled to a patent unless — (f) he did not himself invent the subject matter sought to be patented.

35 U.S.C. § 102(f).  Under this old law, an accused infringer was able to assert a defense of invalidity if the issued patent fails to name the correct inventors.

In 2020 Plastipak sued its competitor Premium Waters for infringing a collection of twelve related patents covering the “neck finish” of a plastic bottle. The neck-portion is more costly and the inventions here generally allow for a reduced neck size while still including tamper-evident formations. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021) reversed on appeal in Plastipak Packaging, Inc. v. Premium Waters, Inc., — F.4th — (Fed. Cir. Dec. 19, 2022).

The patents list two inventors, Richard Darr and Edward Morgan.  But, on summary judgment the district court concluded they should have listed a third inventor, Alessandro Falzoni.  Usually it is no problem for a company to add additional inventors – even after the fact.  Here, though Falzoni was not a Platipak employee or subject to any agreement to assign rights, and so shared inventorship would mean shared ownership with an industry competitor.

What happened: Falzoni designed an improved neck while working for his Italian packaging company SACMI.  SACMI then proposed the design to various US parties, including Plastipak.  As part of that process, Falzoni emailed a 3D model of the design to Darr.  Darr responded with a finished drawing using the Falzoni model; and Falzoni found those drawings acceptable.  Darr asked for SACMI exclusive rights to the design, but, the parties could not agree on a deal. Eventually, Plastipak ended up filing for its own patent rights and manufacturing using alternate sources.

Taking all this in, the district court concluded that Falzoni had contributed significantly to the claimed invention and therefore should have been listed as an inventor. Since he was not listed, the claims were all invalid. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021).

The figure above compares the Falzoni design with that found in Plastipak invention (Fig 2).  The prior art being overcome is found in the middle (Fig 1).

In making its ruling, the district court focused on three primary factors: the “striking similarities” between Plastipak’s engineering drawings and the Falzoni design; the collaboration between Falzoni and Darr at arriving at the invention; and the  financial motivation to exclude Falzoni that made an “honest mistake” unlikely.

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On appeal, the Federal Circuit has vacated, holding that the case was not quite as open-and-shut as the district court claimed.  Although the evidence seems to suggest Falzoni is an inventor, the patentee has a right to a jury trial on this issue because there remain disputed issues of material fact.  In particular, the size of the neck appears to be the critical improvement here, but the patentee raised disputes about the size of Falzoni’s proposed neck.

Ultimately, we agree with Premium Waters that it presented sufficient evidence from which a reasonable factfinder may find clear and convincing evidence that Falzoni was a joint inventor of the X Dimension Patents. Such a finding could be grounded in Falzoni’s testimony, as corroborated by the 3D model and the testimony of another SACMI employee, as well as the arguably suspicious timeline, in which the collapse of Plastipak’s efforts to license SACMI’s ML27 design was quickly followed by Darr and Morgan filing their patent application. Such a finding could lead to the conclusion that the X Dimension Patents are invalid for failure to name Falzoni as an inventor. Crucially, however, nothing in the record requires a reasonable factfinder – particularly one who is resolving all fact disputes, and drawing all reasonable inferences, in Plastipak’s favor – to make these necessary findings. Accordingly, summary judgment of invalidity is not warranted.

Slip Op.

The court goes on to hold that “overwhelming evidence” of joint inventorship is not necessarily enough for summary judgment.  The question instead is whether a reasonable juror could find independent inventorship.  The appellate court also noted that the district court erred in failing to believe the Plastipak testimony.  While the appellate court appeared to agree that a Plastipak’s story of independent invention appeared concocted, the issue of credibility is for the jury to decide.

On remand, the case might still not get to a trial — the district court had not decided all of the summary judgment motions because it found this one dispositive.

Question for you: How do you think a court should handle a similar inventorship issue post-AIA?

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Christopher Dillon (Fish & Richardson) argued for the patentee Plastipak.  Jeffrey Costakos (Foley & Lardner) represented Premium Waters. Both lawyers led their respective trial and appellate teams.

4 thoughts on “Reasonable Stories of Inventorship

  1. 3

    In Canadian law, a patent is essentially never invalidated for failure to name the true inventors, on the view that if an inventor has been wronged by having been left off the patent, the wrong is compounded, not remedied, if the patent is invalidated. The general remedy for failure to name the true inventors is simply to correct the list of named inventors. Failure to identify the true inventors may result in invalidation in the very rare cases in which failure to name the true inventors amounts to bad faith or deceit, in which case the ground invalidity is the bad faith or deceit, and not the failure to name the true inventor as such.

    1. 3.1

      “ The general remedy for failure to name the true inventors is simply to correct the list of named inventors.”

      Also true in the US.

  2. 2

    Well, that depends. However, the situation is even more complicated if there are two companies, and one of the companies takes the liberty of filing patent applications (naming employees of both companies as inventors, with the two companies as joint applicants) without bothering to inform the second company that an application has been filed, and it turns out that the claims as filed are directed only to the inventive contributions of the second company. The second company was developing a component for the first company but retained all IP rights in the component, and the second company never agreed to joint patent filings. Imagine the surprise of the second company’s President when the first company informs them about the patent application filings almost a year later?

  3. 1

    Question for you: How do you think a court should handle a similar inventorship issue post-AIA?>/i>”

    Does the AIA intentional act of removing (writ large) “without intent to deceive” have a bearing to your question?

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