CAFC: Testimony of Alleged Co-Inventor Insufficient to Fill Gaps in Conception Documentation

In Gemstar v. ITC (Fed. Cir., Sept. 2004) the court noted that because an alleged co-inventor failed to present facts supported by clear and convincing evidence, the International Trade Commission erred in holding him to be an unnamed co-inventor of the patent:

Under our precedent, more than just the alleged co-inventor’s testimony is required to establish co-inventorship by facts supported by clear and convincing evidence. The ITC found that the alleged co-inventor Neil’s testimony was "credible and straightforward," while the named inventor, Young’s testimony “lacked those characteristics." In support of his co-inventorship claim, Neil principally relies on his own testimony and the content of two product disclosure documents, an original disclosure document and a "second version" of the disclosure document. Although these product disclosures each contained an annotation listing Neil by name, they did not explicitly state what subject matter Neil contributed. The product disclosures fail to explicitly identify Neil’s contributions, and thus fail to show that Neil’s contributions exceeded the prior art or were part of the invention claimed in the patent. Neil’s own testimony cannot fill in these gaps in the product disclosure documents to establish whether Neil contributed to the invention Thus, even taken collectively, Neil’s own testimony, technical background, and the ambiguous product disclosure documents fail to establish Neil’s co-inventorship of the ’121 patent by facts supported by clear and convincing evidence.

The court also gave a nice review of the law on co-inventorship:

When two or more persons jointly invent, they must jointly apply for a patent. Co-inventors must so apply even though they did not physically work together or at the same time, each did not make the same type or amount of contribution, or each did not make a contribution to the subject matter of every claim of the patent. Because conception is the touchstone of inventorship, each joint inventor must contribute in some significant manner to the conception of the invention.

Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice. An inventor may solicit the assistance of others when perfecting the invention without 'losing' any patent rights.

Because co-inventors need not contribute to the subject matter of every claim of the patent, inventorship is determined on a claim-by-claim basis. Moreover, the inventorship analysis, like an infringement or invalidity analysis, first requires the construction of each disputed claim to determine the subject matter encompassed thereby. The second step is a comparison of the alleged contributions of each asserted co-inventor with the subject matter of the correctly construed claim to determine whether the correct inventors were named.

Alleged co-inventors must establish their co-inventorship by facts supported by clear and convincing evidence. To meet the burden of clear and convincing evidence, the alleged co-inventors must prove their contribution to the conception of the invention with more than their own testimony concerning the relevant facts. Whether the co-inventor’s testimony has been sufficiently corroborated is evaluated under a "rule of reason analysis," which requires that an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.

Corroborating evidence may take many forms. Reliable corroboration preferably comes in the form of records made contemporaneously with the inventive process. Circumstantial evidence of an independent nature may also corroborate. Additionally, oral testimony from someone other than the alleged inventor may corroborate.