Bousetouane v. W. W. Grainger, Inc.
1:25-cv-00230
| N.D. Ill. | Jul 16, 2025Background
- Plaintiff Dr. Fouad Bousetouane sued W.W. Grainger, Inc. and two individuals, alleging he was wrongly omitted as inventor from seven patents developed during his employment as Director of Applied Machine Learning.
- Plaintiff claimed to be the main inventor of a core patent and its related patents but was not listed as such after Grainger filed the patents.
- Plaintiff asserted claims for correction of inventorship (under 35 U.S.C. § 256), declaratory judgment (attempted under "§ 102(f)"), unjust enrichment, and retaliation.
- The court addressed defendants' motions to dismiss under Rule 12(b)(1) (subject matter jurisdiction) and Rule 12(b)(6) (failure to state a claim).
- Plaintiff’s employment agreements assigned all IP developed during his tenure to Grainger; he made no claim to ownership or financial interest in the patents.
- Plaintiff filed suit after his employment was terminated.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction over pending apps | §116 allows court to hear inventorship for pending applications | Only issued patents subject to court review under §256 | No jurisdiction; claims dismissed with prejudice |
| Standing—Correction of invent. | Reputational injury suffices for Article III standing | No financial/ownership/reputational injury tied to economic consequences | No standing; claim dismissed under 12(b)(1) |
| Declaratory Judgment | Patent invalid for failure to list proper inventor under §102(f) | There is no §102(f); inventorship errors are correctable post-AIA | Dismissed; no such statute, claim not actionable |
| Unjust Enrichment | Grainger unjustly retained patents by excluding plaintiff | Employment contract assigned all patent rights to Grainger | Dismissed; no unjust enrichment shown |
| Retaliation | Termination was in retaliation for raising inventorship issue | No statutory/adequate factual basis for a retaliation claim | Dismissed; fails to state a claim |
| Individual Defendants Proper | Individual defendants are nominal parties due to their knowledge | They have no ownership/control over patents, not proper defendants | Dismissed; not proper parties |
Key Cases Cited
- Shukh v. Seagate Tech., LLC, 803 F.3d 659 (Fed. Cir. 2015) (reputational injury can be basis for standing only if tied to economic harm)
- Kamden-Ouaffo v. PepsiCo Inc., 756 Fed. Appx. 949 (Fed. Cir. 2016) (conclusory allegations of reputational harm insufficient for standing)
- Engenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020) (patents not invalidated for inventorship errors if they can be corrected)
- S.E.C. v. Cherif, 933 F.2d 403 (7th Cir. 1991) (definition and role of nominal defendants)