Search the Archives           Subscribe           About this News Service           Reader Comments


Archived updates for Wednesday, April 15, 2009

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.
    (4)comment(s)     translate     More Updates     Send    

4 Comments:

Blogger 123 123 said...

Great story you got here. I'd like to read something more about that matter. Thanx for posting this information.
Sexy Lady
Escort in London

December 17, 2009 10:43 AM  
Blogger LAN said...

puma mens shoes
puma shoes
puma speed
nike shoes
nike air
nike air shoes
nike air max 90
nike air max 95
nike air max tn
nike air rift
nike shox r4
nike air max 360
nike shox nz
puma cat
air max trainers
mens nike air max
sports shoes
nike air rifts
nike air rift trainer
nike air
nike shoes air max
nike shoes shox
air shoes
Lucyliu IS Lucyliu
nike shoe cart
puma future
cheap puma
nike rift
jeans shop
diesel jeans
levis jeans
nike rift shoes
cheap nike air rifts
bape shoes

January 06, 2010 9:58 PM  
Blogger Meiqing Xu said...

20150624meiqing
cheap jordans
louis vuitton
pandora charms
oakley sunglasses
ray ban sungalss
celine outlet
abercrombie & fitch
kobe bryant shoes 2015
coach outlet stores
ray ban outlet
jordan retro
michael kors
coach factorty outlet
ray bans
michael kors
louis vuitton uk
jordan 6 black infrared 2015
michael kors handbags
celine outlet
oakley vault
louis vuitton outlet
fitflops clearance
louis vuitton handbags
christian louboutin
ray ban sunglasses
louis vuitton outlet
cheap jordans
burberry outlet online
christian louboutin shoes
gucci shoes
timberland boots
michael kors outlet
nike air max
coach factory outlet online
coach factory outlet
oakley vault
coach outlet
louis vuitton outlet
true religion sale
ray ban sunglasses

June 24, 2015 2:09 AM  
Blogger wasirdenature said...

cara mengobati kemaluan keluar nanah cara mengobati kemaluan keluar nanah cara mengobati ujung kemaluan keluar nanah ujung kemaluan keluar nanah di sertai perih saat kencing ujung kemaluan keluar nanah di sertai perih saat kencing penyebab penis keluar nanah penyebab penis keluar nanah obat untuk kemaluan yang keluar nanah dan perih saat kencing penis keluar nanah pusat pengobatan herbal obat kemaluan keluar nanah mengapa kemaluan keluar nanah mengapa kemaluan keluar nanah obat penis keluar nanah obat penis keluar nanah cairan nanah keluar dari kemaluan pria cairan nanah keluar dari kemaluan pria obat cairan nanah keluar dari kemaluan obat cairan nanah keluar dari kemaluan obat cairan nanah keluar dari kemaluan cairan nanah keluar dari kemaluan cairan nanah keluar dari kemaluan kemaluan keluar nanah di sertai perih saat kencing kemaluan keluar nanah di sertai perih saat kencing

June 24, 2015 6:06 AM  

Post a Comment

<< Home