“To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement.”
Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights.
The Story
A single meeting, held on August 23, 2011, was central to the court’s inventorship holding. Ragner Technology Corporation was seeking investors to bring its MicroHose product, an expandable hose, to market. Gary Ragner, the company founder, and several others met with Michael Berardi in Berardi’s home to discuss the opportunity.
At the time of the meeting, Berardi had no experience designing or building hoses. He later testified that he was familiar with elastic bands based on his experience working in a hardware store, and prior to the meeting, had watched a video demonstrating the MicroHose. He testified that after seeing the video, but before the meeting, he came up with the idea for his expandable hose while at the gym. He testified that he “wonder[ed] what would happen if [he] put water through” a resistance band, but that he did not start building this hose at that time because “it was just … a nebulous concept.”
Just hours after the meeting, during which Berardi reviewed the MicroHose business plan, he bought supplies to build a hose prototype. Like Ragner Technology Corporation’s prototype, it had an inner elastic tube to provide a biasing force and an outer tube that water ran through. Berardi filed his first patent application for an expandable hose in November 2011, less than three months after the meeting. That application was issued as U.S. Patent No. 8,291,941 patent, with Berardi listed as the sole inventor. His company, Blue Gentian, then sued Tristar, the licensee of Ragner’s patents, for infringement in 2012, asserting the ’941 patent, three related utility patents, and two of Berardi’s design patents. Tristar counterclaimed to correct inventorship.
The court found that each of the four asserted utility patents had one or more claims that require at least three elements that Ragner contributed, and the design patents showed the crumpled hose, which is the result of how the hose is made.
Design patents only cover the appearance of a product. To be an inventor you must contribute to how it looks. The court found that the three components from Ragner created that appearance.
The Outcome
Ragner was declared a co-inventor of all the patents in the suit and Tristar was given rights equal to Berardi’s company, Blue Gentian. The lawsuit was therefore dismissed, and Blue Gentian lost its right to enforce its patent, meaning it no longer had exclusive rights to sell the product.
The Law
As in this case, a district court can order the correction of inventorship when it determines that an inventor has been erroneously omitted from a patent. All inventors, even those who contribute to only one claim, or one aspect of a claim, must be listed on the patent. It’s the omitted inventor’s burden to prove that they should have been added, because it’s presumed that the correct inventors were included.
An alleged inventor must show that he contributed significantly to the conception (the definite and permanent idea of the invention) or reduction to practice of at least one claim, and supply evidence to corroborate this testimony. Corroborating evidence may take many forms, including contemporaneous documents or physical evidence, circumstantial evidence, or oral testimony of someone other than the alleged inventor. As stated in the case, “To determine whether testimony has been sufficiently corroborated, a rule of reason test is applied where ‘all pertinent evidence is examined in order to determine whether the inventor’s story is credible.’”
How Do You Determine an Inventor?
So, what does it take to be an inventor? The critical question is: Who conceived of the invention that is claimed?
Patents typically have several claims broken down into independent and dependent claims. You must look at each of the claims and determine who conceived the invention covered by those claims. There can be cases where different inventors conceived different parts of the invention in different claims.
What’s important to understand is that you must include as named inventors anyone who conceived of an invention in any claim – even dependent claims.
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.
Let’s break this down. There are four requirements in this statement. 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.
When is an idea definite and permanent? Courts have told us that an idea is sufficiently definite and permanent when:
- Only ordinary skill would be necessary to reduce it to practice, and
- Extensive research or experimentation is not needed.
An easier way to think about who the inventor of a particular claim is it’s whoever figured out the complete invention (this can be multiple people) without needing to experiment or consult experts.
In this case, Berardi and Ragner met to discuss the invention. From the court opinion, Ragner appears to have conceded that Berardi had involvement as an inventor. Ragner didn’t try to have him removed as an inventor. He only fought to have himself added. Ragner established that he conceived elements claimed in at least one of the claims of each patent. He was able to prove that he formed in his mind a definite and permanent idea (the three components that made up the hose), which was the complete and operative invention as it was applied in practice. This made him a co-inventor.
Avoid a Similar Issue
Many companies collaborate on inventions and, like Berardi, miss adding all the inventors. In some instances, they think that it was their idea, so they don’t have to add the experts. In other cases, they think that because they hired and paid someone to assist in developing a product, they own the results. Either way, they confuse owning the patent with who should be named as an inventor.
To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent. In this case, Berardi should have entered into an agreement when he started working with Ragner, which would have required Ragner to assign his rights to Blue Gentian.
Or, Ragner should have had everyone sign a non-disclosure agreement or confidentiality agreement requiring them to keep his disclosures secret and not use them without his written authorization. Even better, any improvements resulting from the meeting should have been assigned to Ragner.
Due to the non-documented meeting in this case, both Berardi and Ragner lost important rights in the resulting patents.
The Takeaway
Patent rights are valuable and you must take great care to ensure that all inventors are properly named in the patent. As was the case here, without proper agreements and understandings before the collaboration starts, your patent rights can be easily lost.
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Author: lightsource
