832 F.3d 1343
Fed. Cir.2016Background
- Vapor Point founders Nathan and Matheson sued NanoVapor and Moorhead under 35 U.S.C. § 256 to be added as co-inventors on NanoVapor’s patents ('310 and '862); NanoVapor counterclaimed seeking co-inventorship on several Vapor Point patents and asserted state-law torts and affirmative defenses including an obligation-to-assign theory.
- The district court dismissed all state-law claims by notice of nonsuit and held a four-day bench evidentiary hearing limited to inventorship under § 256.
- The district court found Nathan contributed to three of four key aspects and Matheson contributed to diffusion-plate claims of the '310 patent, ordered correction of inventorship to add Nathan and Matheson to the '310 and '862 patents, and denied NanoVapor’s inventorship claims on Vapor Point patents.
- After the inventorship ruling the district court dismissed the remaining infringement claim because NanoVapor had not joined Nathan and Matheson as co-owners and because NanoVapor had represented that inventorship resolution would be dispositive; the court also denied Vapor Point’s motions for exceptional-case status and attorneys’ fees.
- On appeal the Federal Circuit: (1) affirmed the district court’s inventorship findings as supported by substantial evidence; (2) held NanoVapor waived or forfeited its right to litigate an obligation-to-assign/ownership defense after dismissing the state-law claims and representing inventorship would be dispositive; and (3) affirmed denial of attorneys’ fees (no abuse of discretion).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Correct inventorship of the '310 patent under 35 U.S.C. § 256 | Nathan/Matheson: their conceptual contributions (biodiesel medium, introducing VOCs to medium as micro-particles, particularizer, diffusion plates) make them co-inventors | NanoVapor: court’s inventorship findings lack clear-and-convincing evidence; Matheson didn’t conceive certain features | Affirmed: substantial evidence supports Nathan and Matheson as inventors for at least claim elements of the '310 patent; errors in some findings were harmless |
| Whether NanoVapor’s obligation-to-assign defense required decision before dismissal | Vapor Point: ownership/assignment is distinct from inventorship and was an equitable defense tied to state claims that were dismissed; thus moot | NanoVapor: court should decide obligation to assign before dismissing infringement claim | Held: NanoVapor waived/forfeited the assignment defense by nonsuiting state claims and representing inventorship disposition would resolve the case; dismissal proper |
| Standing to pursue infringement after inventorship correction | Vapor Point: because co-inventors were added and not joined in NanoVapor’s infringement suit, NanoVapor lacks standing | NanoVapor: could still assert an obligation-to-assign or equitable rights to preserve infringement claim | Held: dismissal appropriate—co-owners must all join; absent written assignment and given NanoVapor’s concessions, infringement claim could not proceed |
| Exceptional case / attorneys’ fees under statute | Vapor Point: NanoVapor’s conduct (alleged theft plot, litigation posture) made case exceptional warranting fees | NanoVapor: litigation positions justified | Held: District Court did not abuse discretion in denying fees; Federal Circuit affirms (no written explanation required) |
Key Cases Cited
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir.) (right to bring § 256 inventorship action)
- Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir.) (co-inventor need only contribute to one claim/aspect)
- Enovsys LLC v. Nextel Commc’ns, Inc., 614 F.3d 1333 (Fed. Cir.) (all co-owners must join to have standing in an infringement suit)
- MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568 (Fed. Cir.) (§ 256 authorizes judicial resolution of co-inventorship disputes)
- Sky Techs. LLC v. SAP AG, 576 F.3d 1374 (Fed. Cir.) (§ 261 requires written assignments; federal law governs assignability)
- Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed. Cir.) (recognized shop-right and implied-in-fact contract theories; discussed by concurrence as in tension with § 261)