916 F.3d 1350
Fed. Cir.2019Background
- Coda (CODA Developments/Innovations) and inventor Hrabal disclosed confidential self-inflating tire (SIT) technology to Goodyear at two meetings in 2009 under an NDA; Goodyear personnel photographed a prototype without permission.
- Goodyear later filed and obtained multiple patents (starting with U.S. Patent No. 8,042,586) claiming assemblies and methods covering elements Coda alleges were proprietary.
- Plaintiffs sued (2015) under 35 U.S.C. § 256 to correct inventorship (add Hrabal; remove Benedict/Losey) for the ’586 patent and several related patents, and alleged trade-secret misappropriation under Ohio law.
- The district court granted Defendants’ Rule 12(b)(6) motion, relying in large part on a 2008 Hrabal article (considered on reply) to find prior public disclosure, and dismissed the trade-secret claim as time-barred; the court also denied leave to amend post-judgment.
- The Federal Circuit vacated and remanded: it held Plaintiffs’ inventorship and trade-secret claims plausible on the face of the complaint and found the district court erred by relying on extrinsic material (the Hrabal article) without converting to summary judgment and by prematurely resolving statute-of-limitations issues; it also instructed that leave to amend should be allowed on remand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether complaint plausibly pleads Hrabal's conception / joint inventorship (§256) | Hrabal conceived novel SIT elements disclosed to Goodyear; meetings, NDA, unauthorized photos, timing support misjoinder/nonjoinder | Complaint fails to show conception/co‑conception or required collaboration; prior public disclosures (including Hrabal article) negate novelty | Vacated dismissal — complaint plausibly alleges conception and collaboration; factual disputes about prior disclosure unsuitable for 12(b)(6) dismissal |
| Whether trade-secret claim is time‑barred under Ohio's 4‑year statute | Misappropriation discovered later; Goodyear silence and interactions did not necessarily trigger duty to investigate in 2009 | Plaintiffs should have discovered claim by June 2011 (publication of application); statute of limitations bars claim | Vacated dismissal — statute‑of‑limitations resolution is fact specific; complaint does not compel inference that Plaintiffs should have discovered claim as a matter of law |
| Whether district court could consider Hrabal article on reply without converting to summary judgment | Article raises disputed factual issues about what was publicly disclosed; plaintiff lacked opportunity to respond | Article is judicially noticeable public record; could be considered on 12(b)(6) | Court erred: article involved disputed facts and required conversion to summary judgment and opportunity to present evidence before adverse resolution |
| Denial of leave to amend after judgment | Proposed amended complaint supplied additional factual detail (e.g., specific pump‑tube location); leave should be granted to pursue claims on the merits | Plaintiffs had not sought leave earlier; court declined a post‑judgment "do over" | Vacated district court's denial — Rule 15 favors amendment; plaintiffs should be permitted to file the proposed amended complaint on remand absent a clear futility argument |
Key Cases Cited
- BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (review standard for Rule 12(b)(6) in Federal Circuit context)
- Allied Erecting & Dismantling Co. v. Genesis Equip. & Mfg., Inc., 805 F.3d 701 (6th Cir. 2015) (Sixth Circuit standard for construing complaints on dismissal)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility standard for 12(b)(6))
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (Twombly plausibility/antitrust pleading standard cited for general pleading principles)
- Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997) (§256 purpose and correction-of-inventorship principles)
- Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d 1371 (Fed. Cir. 2001) (conception is the touchstone of inventorship)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (joint inventorship contributions and collaboration requirement)
- Foman v. Davis, 371 U.S. 178 (1962) (Rule 15 leave-to-amend should be freely given absent specific reasons)