The Federal Circuit has affirmed a district court’s grant of summary judgement finding two patents invalid for failing to list a coinventor.

Fortress Iron, LP designs and sells railing and fencing products used in the construction of outdoor living spaces.

Fortress works with two Chinese companies to manufacture their products: manufacturer Yinxin Handicrafts Co., Ltd. (“YX”) and quality control liaison Quan Zhou Yoddex Building Material Co., Ltd. (“YD”).

In 2013, Fortress’s owner, Matthew Sherstad, “had an idea for a vertical cable railing that could be purchased as a pre-assembled panel.” This design made it easier to install compared to products that needed to be assembled on site.

Fortress employee Kevin Burt sketched an initial design of the product, and Sherstad and Burt worked with YD to produce a prototype.

However, there were problems with the cables rotating during tensioning.

YD employees HuaPing Huang and Alfonso Lin then suggested changes to address the cable tensioning issue, and those changes were incorporated into the final design.

Fortress filed patent applications for the vertical cable railing panels, which issued as the ’707 and ’290 patents. Initially, the patents named only Sherstad and Burt as inventors but didn’t include Lin or Huang.

Huang’s employment at YD ended in 2016, and he didn’t provide his contact information to YD or Fortress.

In 2021, Fortress sued Digger Specialties Inc. (“DSI”) for infringement of the ’707 and ’290 patents.

During litigation, DSI learned that Lin and Huang contributed to the invention, and Fortress acknowledged that Lin and Huang were coinventors.

Fortress located Lin and successfully added him as a coinventor to the patents. However, Fortress was unable to locate Huang and add him as a coinventor.

Under 35 U.S.C. § 256(a),

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

Fortress moved for partial summary judgment to correct the ’707 and ’290 patents by adding Huang as a coinventor pursuant to 35 U.S.C. § 256(b).

DSI opposed Fortress’s motion and moved for summary judgment of invalidity due to incorrect inventorship.

The district court denied Fortress’s motion to the extent that it did not order correction of the ’707 and ’290 patents, then granted DSI’s motion, holding that the patents were invalid for omission of an inventor.

Fortress appealed.

The Federal Circuit noted that “A patent must accurately name those who invented its claimed subject matter” and “Failure to do so renders a patent invalid.”

However, Congress gives patentees who incorrectly listed inventors the opportunity to correct such patents by complying with the requirements of 35 U.S.C. § 256.

However, Section 256(b) doesn’t automatically allow a court to order correction of a patent. Rather, the court may only do so “on notice and hearing of all parties concerned.”

The court then considered whether Huang––an agreed-upon omitted coinventor––was a “party concerned” under § 256(b).

The district court concluded that Huang was a “party concerned” under § 256(b) and therefore entitled to notice and an opportunity to be heard before the court could order any correction of inventorship.

The Federal Circuit agreed, saying

Inventors occupy the central role in the patent process. They are where it all begins, even if they eventually assign their interests to others, such as employers. Thus, their explicit references in the statutory framework cannot be taken lightly.

Fortress argued that Huang wasn’t a “party concerned” because adding him as a coinventor would benefit him, not adversely affect him

The court disagreed, saying

Neither the parties, nor we, know for certain whether Huang would be adversely affected or would benefit by being listed as an inventor on the patent.

Also, said the court,

to conflate a “party concerned” with those with potentially adversely affected property interests would be to rewrite the language of the statute from “party concerned” to “those with an economic interest that may be adversely affected”.

Said the court,

Inventorship carries legal, financial, and ownership consequences that an inventor has a right to contest.

For these and other reasons, the Federal Circuit affirmed the district court’s denial of Fortress’s partial motion for summary judgment for inventorship correction under § 256(b).

Practice Tip: Get your named inventors right the first time, to avoid the risk of losing your patent rights!

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