Dependent Claim Element Insufficient to Trigger U.S. Inventorship

In Nartron Corp. v. Schukra U.S.A., Inc. (March 5, 2009) the Federal Circuit court of appeals reiterated that one "does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim." In this case, dependent claim 11 recited "The [seat control module for introducing massage to a seat control with an adjustable lumbar support] invention as defined in claim 6 wherein said lumbar support adjustor includes an extender."

According to the opinion by Circuit Judge Lourie,

We agree with Nartron that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. "One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor." Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) ("[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art." (quotation marks omitted)). Moreover, a joint inventor must "contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention."
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387
F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473
(Fed. Cir. 1997)).

. . . .the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 ("The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art." (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 ("A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.").

Borg Indak admitted at oral argument that a lumbar support adjustor with an extender existed in automobile seats in the prior art. Thus, Benson’s contribution of supplying the extender to the patented invention was the exercise of ordinary
skill in the art. The specification of the ’748 patent makes clear that the
automobile seat, including its lumbar support adjustor and extender, comprises
the existing object on which the invention (i.e., the control module) operates,
or the background to the invention. . . . As Borg Indak admitted, the extender
was an existing feature in an automobile seat. In fact, the necessity for the
invention described in the ’748 patent arose from the fact that existing
automobile seats had the parts required to provide a massage (e.g., lumbar
support adjustors including extenders), but simply lacked the controller that
would move those parts in a way that would provide a massage. . . .Thus,
Benson’s suggestion that the control module be capable of operating with an
automobile seat that has a lumbar support adjustor including an extender only
amounted to the exercise of ordinary skill in the art.

Further supporting the conclusion that Benson’s contribution of the extender was
insignificant when measured against the full dimension of the invention of claim
11, the specification and claims of the ’748 patent primarily focus not on the
structure of the seat itself, but on the structure and function of the control
module, which operates the seat. The specification mentions the extender only
once in a twenty-column patent.

The only time that the specification mentions the extender, it does no more than refer to it as the background upon which the invention is built. . . . The patent contains no description of the physical characteristics of the extender, nor does it contain any drawing of the
extender.

. . . This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11.