Wagner v. Ashline
21-1715
| Fed. Cir. | Nov 17, 2021Background
- Simpson Performance Products (assignee) and Trevor Ashline (named inventor) own U.S. Patent No. 8,272,074 (the ’074 patent) for a head-and-neck restraint (HNR) device; Julie Wagner claims she is a joint inventor.
- Wagner is the inventor of U.S. Patent No. 7,703,150 (a child safety vest with shoulder flaps) and met Ashline several times in 2003–2006, left a prototype vest with him, and discussed testing/marketing.
- Ashline developed earlier HNR prototypes and parent patents (including the ’669 and ’623 patents) disclosing shoulder extensions before meeting Wagner.
- Wagner sued in 2018 under 35 U.S.C. § 256 seeking to be added as a joint inventor of the ’074 patent and asserted related state-law claims (fraud, unjust enrichment, constructive trust).
- The district court granted summary judgment for defendants, concluding Wagner failed to provide legally sufficient independent corroboration of her claimed contribution (the “shoulder portions” limitation); the Fourth Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Wagner is a joint inventor of the ’074 patent under 35 U.S.C. § 256 | Wagner contends she conceived the "shoulder portions" limitation and told Ashline about that idea during meetings | Ashline/Simpson argue the shoulder concept was already in Ashline's prior designs and patents and Wagner offered only her own testimony plus weak evidence | No — summary judgment affirmed: Wagner failed to produce adequate corroboration as a matter of law |
| Whether Wagner provided independent corroboration of her alleged conception | Wagner points to patent-file differences, attendance of a third party (Cooksey), and Ashline’s testimony about meetings | Defendants argue the parent patents already disclosed shoulder features; Cooksey's testimony only confirms meetings; Ashline’s testimony does not corroborate conception | No — evidence only established meetings/consultation, not contribution to conception |
| Challenge to district court's claim construction | Wagner argued claim construction errors undermined summary judgment | Defendants defended the court’s construction and argued invention record did not change with construction | Not reached — appellate court affirmed on corroboration grounds, so claim construction unnecessary |
| State-law claims (fraud, unjust enrichment, constructive trust) and statute of limitations | Wagner asserted state claims dependent on inventorship status | Defendants argued state claims are time-barred and in any event fail if Wagner is not an inventor | Not reached on merits — dismissed because inventorship claim fails; inventorship ruling is dispositive |
Key Cases Cited
- Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (clear-and-convincing standard for proving inventorship)
- Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993) (alleged co-inventor’s testimony generally requires independent corroboration)
- Coleman v. Dines, 754 F.2d 353 (Fed. Cir. 1985) (burden to provide independent corroboration of contribution)
- Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006) (corroboration prevents fraud and mischaracterization of past events)
- Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir. 1997) (corroboration requirement explained)
- Fleming v. Escort Inc., 774 F.3d 1371 (Fed. Cir. 2014) (corroboration reviewed as a question of fact)
- Symantec Corp. v. Computer Associates Int'l, Inc., 522 F.3d 1279 (Fed. Cir. 2008) (corroborating evidence must show contribution to the idea, not mere discussion)