In Re: Verhoef
888 F.3d 1362
| Fed. Cir. | 2018Background
- VerHoef filed U.S. application No. 13/328,201 for a dog mobility device; he initially listed himself as sole inventor.
- The claimed device includes an expressly recited paw loop formed by a material strip looped into a figure-eight that fits about the metatarsus and two innermost toes.
- VerHoef’s affidavit admits he conceived the problem but that veterinarian Dr. Alycia Lamb suggested the specific figure-eight strap solution, which VerHoef then implemented.
- VerHoef’s counsel first filed a joint application naming Lamb and VerHoef as co-inventors, but later filed the ’201 application listing only VerHoef; Lamb contemporaneously filed her own sole-inventor application.
- The PTO examiner rejected the ’201 claims under pre-AIA 35 U.S.C. § 102(f) for improper inventorship; the PTAB affirmed, concluding the figure-eight was an essential claimed feature and Lamb was a joint inventor.
- The Federal Circuit affirmed, holding Lamb contributed conception of an essential claim element and therefore must be named as a joint inventor; failure to do so justified the § 102(f) rejection.
Issues
| Issue | VerHoef's Argument | PTO/Board's Argument | Held |
|---|---|---|---|
| Whether Lamb is a joint inventor of the claimed device | Lamb only suggested an idea; VerHoef retained control and is sole inventor; “intellectual domination” suffices | Lamb proposed the specific, essential figure-eight solution and thus contributed to conception | Lamb is a joint inventor; her figure-eight contribution was conception of an essential claim element |
| Whether conception requires a complete solution to every claimed feature | VerHoef: not necessary if inventor directs reduction to practice and controls work | Conception requires a definite, settled idea of every claimed feature | Conception requires every claimed feature; Lamb’s suggestion satisfied that requirement for the figure-eight |
| Whether § 102(f) rejection was proper for naming only VerHoef | VerHoef: omission is excusable because he implemented and reduced to practice the device | PTO: failure to name joint inventor renders application unpatentable under § 102(f) | § 102(f) rejection proper where record shows a joint inventor was omitted; affirming PTAB |
Key Cases Cited
- Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir.) (inventorship requires correct naming; failure renders patent invalid)
- Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir.) (conception requires a definite and permanent idea of every feature)
- Sewall v. Walters, 21 F.3d 411 (Fed. Cir.) (inventorship equates to who conceived the subject matter)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (factual findings underlying conception reviewed for substantial evidence)
- PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir.) (examiners must reject applications under § 102(f) when inventorship is incorrect)
- Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353 (Fed. Cir.) (examiner must evaluate which set of inventors conceived the invention)