Ethicon, Inc. And Inbae Yoon, M.D. v. United States Surgical Corporation and Young Jae Choi

program.” Id. That under entitlements

opinion support therefore offers no for TCC’s application

legal challenge to the of the anti- regulation

circumvention to this case. More- over, opinion Commission’s later

RFB Petroleum case resolved the issue government’s favor as far as FERC was

concerned. apart Even from the on FERC decisions issue, agree government’s we with the

interpretation regu- of the anti-circumvention

lation. As the district court in this case noted, gov- common sense dictates that the

ernment need not demonstrate a violation of separate regulation support in order to

liability under section 205.202. “To hold that liability only 205.202 created where there independent liability

was an basis for would Co., provision render the redundant.” Crude F.Supp. at 239. ample There is evidence that activi- TCC’s conjunction

ties with SRCI constituted practices reporting that circumvented the re- Indeed, quirements regulations. clearly evidence pur- showed that the entire

pose arrangement between SRCI and report, TCC was to enable SRCI as its own, owned, purchased, oil that inwas fact sold,

processed, and for the account of Consequently, justified

TCC. FERC was holding violating TCC liable for the anti- regulation.

circumvention

AFFIRMED.

ETHICON, Yoon, INC. and InBae M.D., Plaintiffs-Appellants,

UNITED STATES SURGICAL CORPO- Young Choi,

RATION Jae De-

fendants-Appellees.

No. 97-1269. Appeals,

United States Court of

Federal Circuit.

Feb. 1998. Denied;

Rehearing Suggestion for

Rehearing In Banc Declined

April Dobbins, Patterson,

David F. Belknap, LLP, Tyler, City, argued Webb & New York plaintiffs-appellants. for On brief were Lewis, Pippert, Jeffrey Thomas W. I.D. Erik Eugene Haas. Of counsel was M. Gel- ernter. Kurzweil,

Harvey Ballantine, Dewey New City, argued York defendants-appellees. for Walter, On brief were E. Joseph Ang- Clark land, Badke, Bradford J. and Lawrence Zeldes, Brocehini. Of counsel was Jacob D. Zeldes, Cooper, Bridgeport, Needle & CT. Also of counsel were Thomas R. Bremer and Nabulsi, Basam E. Surgical United States Norwalk, Corporation, CT. NEWMAN, Judge,

Before Circuit SKELTON, Judge, Senior Circuit RADER, Judge. Circuit RADER, Judge. Circuit action, patent infringement In this Dr. In- (Yoon) licensee, Bae Yoon and his exclusive Ethicon, (Ethicon), appeal Inc. from the judgment of the United States District Court for the District of Connecticut. In Yoon Surgi- and Ethicon sued United States (U.S. Corporation Surgical) cal infringe- (the 4,535,773 ment of U.S. Patent No. ’773 patent). parties stipulated In Young intervention of Mr. Jae Choi (Choi) defendant-intervenor. Choi claimed to be an omitted co-inventor of granted the ’773 and to have U.S. a retroactive license under that Choi, Surgical’s motion to correct Yoon met ent. On U.S. electronics techni- cian, inventorship of the ’773 under college training phys- who had some district court ruled that ics, U.S.C. chemistry, engineering, and electrical but co-inventor of two Choi was omitted college degree. no Choi had worked in the (D.Conn.1996), claims, F.Supp. see 937 development research and of electronic de- Surgical’s subsequently granted U.S. vices. After Choi had demonstrated to Yoon infringement motion to dismiss the com- developed, some of the devices he had Yoon (D.Conn.1997). plaint, F.Supp. see asked Choi to work with him on several Because the district court’s determination projects, including safety one for trocars. correct, eo-inventorship was and because paid Choi was not for his work. is a owner of the ’773 who collaborating approxi- after against Surgi- to suit has consented months, mately eighteen relationship their cal, this court affirms. ended. Choi believed that Yoon found his unsatisfactory unlikely produce work and to I. BACKGROUND any reasons, product. marketable For these trocars, patent The to an es- ’773 relates cooperation Choi withdrew from with Yoon. endoscopic surgery. A sential tool for trocar however, year, In the same Yoon filed an surgical is a instrument which makes small application patent disclosing for various body cavity, in the wall of a often incisions safety embodiments of a abdomen, trocar. Without endoscopic the to admit instru- Choi, informing Yoon himself Trocars within an named as the ments. include shaft 1985, of sole In outer sleeve. One end the shaft has inventor. the Patent and sharp surgery, blade. At the outset of the patent Trademark Office issued the ’773 to surgeon puncture Yoon, uses the blade to the wall fifty-five claims. Yoon thereafter cavity. and extend the trocar into the The granted an exclusive license under this shaft, surgeon leaving then removes the the ent to Ethicon. Yoon did not inform of Choi sleeve, through hollow outer which the sur- patent application the or issuance. geon may tiny surgical insert cameras and In against Ethicon filed suit U.S. operation. instruments for the Surgical infringement of claims 34 and 50 trocars, however, pose a risk Conventional patent. In of the ’773 while this suit damage organs of to internal or structures. pending, Surgical was still U.S. became wall, punctures cavity theAs trocar blade the Choi, regarding him aware of and contacted can the sudden loss of resistance cause the safety pro- in Yoon’s his involvement trocar injure lunge blade to forward and an internal ject. his When Choi confirmed role the organ. The ’773 claims a trocar that safety project, Surgical trocar U.S. obtained embodiment, danger. alleviates this In one practice from Choi a “retroactive license” to blunt, equips the invention the trocar with a “Choi’s trocar related inventions.” Under spring-loaded pierces rod. As the trocar the license, Surgi- agreed the Choi to assist U.S. wall, cavity automatically springs the rod for- regarding patent. the ’773 cal suit precede against ward to the blade and shield part, Surgical agreed pay For its to U.S. injury. A second embodiment has a retract- contingent ability to Choi on its ultimate springs able trocar blade that back into a practice continue to and market the inven- protective passes through sheath when it the hand, tion. With the license U.S. cavity wall. The also teaches the use inventorship to of the ’773 moved correct of an electronic sensor the end of the blade § claiming under 35 U.S.C. that signal surgeon punc- to the at the moment of of Choi was a co-inventor claims ture. Following hearing, the and 47. extensive Yoon is a doctor and inventor of medical motion, granted Surgical’s court district U.S. patented endoscopic numerous devices for finding that to the sub- Choi had contributed 1970s, In surgery. began the late Yoon to ject 47. matter of claims and safety prevent conceive of a to acci- device Surgical next moved for dismissal of U.S. injury during dental trocar incisions. Yoon Choi, suit, infringement arguing that as a the also conceived of a device to alert the sur- granted it a geon complete. when the incision was owner of the had terms, By sufficiently patent. permanent” license its “definite when valid under rights purported grant to use ordinary the license “only necessary skill would be patent extending retroactively back to its practice, reduce the invention to without ex- granted issuance. The district court experimentation.” tensive research or Bur- Surgical’s motion the suit. and dismissed Wellcome, roughs F.3d 1228. appeals finding Ethieon the district court’s must in conceived invention co-inventorship and its dismissal every feature of the matter clude complaint. Specifically, Ethieon contends Sewall, (1) claimed See F.3d at supplied Choi corrobora- insufficient (2) Nevertheless, co-invention; conception testimony 415. for the of a tion for his invention, presented insufficient to show joint Choi evidence each of the inventors clearly co-invention of claims 33 and 47 type need not “make the same or amount of (3) convincingly; accepted illegal pay- Choi contribution” the invention. 35 U.S.C. testimony which ment his factual Rather, perform only each needs to court should therefore from have excluded part produces task which the inven proceedings; of the license terms hand, quali tion. the other one not On does agreement only part limit it fy by merely assisting as a inventor contributed, to which invention inventor actual after patent; agreement entire even if the Sewall, invention. 21 claimed See F.3d at the entire it cannot release licenses 416-17; Shatterproof Corp. Libbey- v. Glass liability past infringe- from U.S. for Co., 613, 624, Owens Ford 758 225 F.2d ment. 634, (Fed.Cir.1985) (“An USPQ 641 inventor services, ‘may the use ideas aid of others and II. CO-INVENTORSHIP process perfecting the his invention presump Patent issuance creates a ” losing patent.’ (quot his without to a tion the the named inventors are true Comm’n., v. ing Energy Hobbs U.S. Atomic only and inventors. See v. Advanced Hess (5th 849, 864, 713, USPQ 451 F.2d 171 724 Inc., 976, 980, Sys., Cardiovascular 106 F.3d Cir.1971))). One simply provides who the 1782, (Fed.Cir.), USPQ2d 41 1785-86 cert. principles or inventor well-known ex — denied, -, 117 138 S.Ct. plains state the of the art without ever hav (1997). Inventorship ques- 216 L.Ed.2d is a ing and “a firm definite idea” of the claimed law, tion of which this court without reviews qualify combination as whole does not as a Walters, See v. 21 deference. Sewall F.3d Hess, joint at inventor. See 106 F.3d 981 (Fed.Cir. USPQ2d 1356, 30 1358 (15 Morse, How.) O’Reilly (citing v. 1994). 56 U.S. However, un- court reviews the 62, 111, (1853)). Moreover, 14 L.Ed. 601 derlying findings uphold of fact which dis- depending claims, on inventorship scope patent’s trict court’s for the of a détermination Hess, at clear error. See 106 980. ordinary simply F.3d one of skill the art who the practice reduced inventor’s idea to is not patented A may be invention necessarily joint inventor, speci if even the work of two or more inventors. See 35 satisfy fication discloses embodiment (1994). § “[conception 116 U.S.C. Because Sewall, requirement. the best mode 21 See is the touchstone of each inventorship,” F.3d at 416. generally inventor must contribute conception of Burroughs the invention. Furthermore, a co-inventor need not Inc., Lab., Wellcome Co. v. Barr 40 F.3d every pat make of a a contribution to claim (Fed. 1223, 1227-28, USPQ2d 32 1919 § 35 ent. See U.S.C. 116. A contribution to Cir.1994). “Conception is the ‘formation in enough. Diag is one claim See SmithKline inventor, mind of of a definite and nostics, Corp., Inc. v. Helena Lab. 859 F.2d permanent opera idea of complete (Fed.Cir. 878, 888, USPQ2d 1468, 8 1476 invention, applied tive as it is to be hereafter ” 1988). Thus, the critical for question practice.’ Hybritech, Inc. v. Monoclonal conceived, Antibodies, is Inc., 1367, 1376, conception who as that term is 231 law, (Fed.Cir.1986) subject matter USPQ 1 used (quoting Rob (1890)). on inson Patents 532 An at idea is the claims issue. by provides being that a sleeve limited contact of

35 U.S.C. said from an issued sleeve, omitted co-inventor abutment member with said patent by a court “be may be added having said shaft a distal end with a question.” matter is called in fore which such tapering distal blade surface into a however, al eo-inventorship, To show sharp point, distal said distal blade prove leged co-inventor or co-inventors must being perforated along one surface contribution to the their aperture, puncturing side convincing claims clear and evidence. See organ anatomical structure when sub- Hess, However, at 980. “an inven F.3d jected along to force longitudinal testimony respecting the facts sur tor’s shaft; axis of said priority rounding a claim of derivation or having bearing means a blunt distal cannot, alone, standing invention rise to the surface, slidably extending through convincing proof.” level of clear and Price aperture, reciprocating said Symsek, through aperture said while said abut- (Fed.Cir.1993). The rule is the in stationary ment member is contact alleged testimony. same for an co-inventor’s sleeve; with said Hess, Thus, alleged 106 F.3d at 980. See positionable punc- means between said supply co-inventor must evidence to corrobo turing reciprocating means and said Price, testimony. rate his See F.2d biasing means for a distal section of testimony the inventor’s has Whether reciprocating protrude said means to sufficiently is evaluated been corroborated beyond aperture permitting said analysis. a “rule of reason” Id. at under reciprocating said distal section of said analysis, 1195. Under this evaluation “[a]n aperture means to recede into said pertinent must be made so of all evidence credibility bearing when said surface is that a sound determination [alleged] story may ...; inventor’s be along force its axis reached.” Id. proximal means connectible to the end puncturing respond- of said means Corroborating may many evidence take ing longitudinal movement of said contemporaneous forms. Often documents prepared by putative reciprocating means relative to inventor serve to said testimony. puncturing corroborate an inventor’s See id. creating means and a sen- at 1195-96. Circumstantial evidence about signal having upon sible one state re- may process the inventive also corroborate. cision of said section of distal said Pearson, See Knorr v. reciprocating aperture means into said (CCPA 1982) (“[Suffi- USPQ upon protrusion and another state indepen- cient circumstantial evidence of an reciprocating said distal section said satisfy dent nature can the corroboration aperture. means from said rule.”). Additionally, testimony oral of some- To determine whether Choi made a contri- alleged other than one inventor cor- subject conception bution to the of the mat- Price, roborate. See 988 F.2d at 1195-96. ter of claim this court must determine what contribution was and then Choi’s A. Claim 33 appears whether that contribution’s role The district court determined that the claimed invention. If Choi in fact con- conception Choi contributed to the by claim tributed to the invention defined (with subject claim matter of 33. Claim 33 he that claim. is a inventor of elements) emphasis highlight relevant Figures 19 of the ’773 illus- reads: trate an of claim 33. These embodiment surgical providing A instrument for com- figures aperture show a trocar blade with an through organ munication an anatomical can extend. through which blunt rod structure, comprising: penetrates W^henthe trocar blade the inner having means an abutment member and rod, cavity, spring wall of a releases the longitudinally accommodatable shaft sleeve, juts past which out the end of the trocar longitudinal an outer within cutting prevents shaft blade and the blade from movement said inside said supports also includes a the trial court’s conclusion that further. The embodiment surgeon gives structure that aural and documents to Yoon altered and backdated signals pen- visual when the blade nears appear independently make it that he had trocars, shields, etration. invented and electronics. Moreover, testimony Yoon’s trial clashed The district court found that Yoon con- deposition testimony. For with his earlier However, probe. the use of a blunt ceived of instance, learning of role in the before Choi’s the court found that Choi conceived of and case, falsely deposition Yoon testified at his thereby contributed two features contained early he worked with Choi as had figures in the embodiment shown in 18 and in this case first, 1975 and the sketches issue locating the blunt 19: Choi conceived completely by him. allowing had been drawn Howev- probe in the trocar shaft and it to er, pass through aperture an in the blade sur- the two did not meet until and when face; second, authorship Choi conceived of the “means questioned later about of the doc- creating signal.”1 uments, ... ... sensible replied, Yoon “If I said at that [that] time, maybe I then was confused.” The dis- “locating If Choi did indeed conceive justifiably trict court discounted Yoon’s testi- probe allowing blunt in the shaft and it to mony. pass through aperture in the blade sur- face,” he contributed to the matter of sum, In full after consideration of the rele- requires claim 33. Claim 33 that the “distal evidence, vant the district court determined “perforated along blade surface” be one side part that Choi conceived of the invention aperture” requires the “shaft” to in claim 33. This court no recited detects “longitudinally within be accommodatable cause to reverse this determination. construed, Properly [the] outer sleeve.” claim 33 includes the elements that Choi B. Claim 47 according to the invention contributed The district court also determined findings. district court’s that Choi contributed to the making finding, the district court (with subject matter of claim 47. Claim 47 extensively testimony. relied on Choi’s Choi elements) emphasis highlight relevant extending testified that the idea of the blunt reads: probe through aperture in the trocar A surgical providing instrument for com- blade itself was his idea. To corroborate this through organ munication an anatomical testimony, produced a series of structure, comprising: working he sketches created while probe Yoon. sketch shows a having elongate One inside the means shaft exhibit- blade, extending through shaft of a trocar ing longitudinal terminating a axis and opening end, in the side of the end of the blade. sharp, puncturing in a for distal cavity organ wall an anatomical showing, presented To rebut Yoon Choi’s a structure; July drawing dated which disclosed by of claim 33. puncturing elements The district court means borne said means determined, however, that Dr. Yoon had al- for converting distal end counterforce fact, drawing. according tered this In cavity against exerted said wall court, originally depicted district it had said distal end into transmissible ener- entirely patent. device from an different gy; suspicious origins, Due to its the trial court converting means connected to said rejected it as unreliable. conveying means for said transmissi- testimony energy proximal The court also discounted Yoon’s ble toward the end of means; credibility. for lack of puncturing Indeed the record said Surgical’s position dispute However, designed 1. U.S. here is that this is a that Choi these networks. element, means-plus-function sponding only and the corre- argues corresponding Ethicon that the specification structures in the are the structure is a switch—conceived of Yoon. Giv- pictured two alternative electrical networks in inventorship en our resolution of the of claim 33 figures patent. 5 and 30 of the '773 See 35 grounds, on other we need not address issue. this (1994). parties U.S.C. V6 do not coaxially testimony having parties, an interior bore dition to oral means longitudinal axis of aligned sketches, with the district court cited Choi’s one of punctur- receiving shaft for said said clearly detaining which shows the rod means. end; ing proximal means However, the sketch in which the district biasing puncturing for said means means detaining court would find the detent means proximal end to withdraw into said appears differently to work than the embodi- bore; interior ment described the ’773 Instead interposed punctur- between said means radially of a detent that extends outward ing proximal end and said means through sheath, a hole in the the sketch assuming normally bore interior illustrates the use of plunger the solenoid protruding position determining detent, itself as a extending radially inward detaining2] puncturing said [sic: Thus, through a hole in the sheath. proximal means end extended from record not does show that Choi contributed cavity opposition said interior detaining Therefore, to the detent means. biasing said means. finding this court affirms the district court’s whether made a contri- To determine detaining Choi contributed the rod means, mat- bution to the but determines that the trial court court ter of claim this must determine clearly finding erred that Choi contributed what contribution was and then con- Choi’s detaining the detent means. language to if strue the claim determine instance, however, In this claim 47 recites way its into the Choi’s contribution found ... [detaining].” “means The use of defined invention. gives presump- word “means” rise to “a 34, 35, Figures and 36 illustrate the inven- tion that the inventor used the term advised- embodiments, In tion in claim 47. these ly statutory to invoke the mandates for spring pulls the trocar back into a cocked Prods., means-plus-funetion clauses.” York protective sheath as soon as the blade has Ctr., Family Inc. v. Central Tractor Farm & inner Release of the punctured the wall. detaining triggers retracting means (Fed.Cir.1996). Although presumption is spring detaining action. The two means dis- conclusive, see, e.g., (construing id. specification are a detent3 closed in claim “means” without reference to section extending radially outward from the trocar 6), paragraph language the means here through a hole in the sheath and a rod interpretation regimens invokes the of sec- extending horizontally proximal from the end 112, paragraph applying tion 6. Thus section off-center, against the trocar butts claim, paragraph interpret 6 to slidable, but bar with a hole its center. adopted language the two structures means, detaining the ease of the when detent specification to define the means for detain- a sensor detects that the trocar blade has ing. pierced cavity, plunger the wall of a of a pushes solenoid the detent out of the hole in Choi showed contribution to one of detaining the sheath. In the ease of the rod these alternative structures. The contribu means, positions plunger the solenoid the bar means-plus- tor of means of a disclosed aligns in so that the hole its center with the function claim element is a inventor as rod. claim, asserting to that sole inven unless one torship can show that the contribution of that The district court concluded that Yoon practice trocar, simply means was a reduction to generally invented the retractable but concept. the sole inventor’s broader See Se- detaining that Choi invented both of the wall, specification. (holding design- in that means disclosed ad- 21 F.3d at 416 the prosecution history plainly very clearly 2. shows that this tion refers to it as a "detent.” It is typesetting Response error. See is Office plunger. the solenoid that See '773 has (filed May Action of November 20-26; col. lines col. lines 1-5. The 1984), p. 25. consistent, is how- district court’s nomenclature ever, sketches, with one of Choi's as discussed 3. The district court referred to this element as a helow. "plunger,” although patent’s specifica- the ’773 edged conceivably er of one means was not a that “an inventor can disclosed inventor). Although the district court found prove prior conception by clear convinc- that Yoon first of a retractable conceived ing although piece evidence no one of evi- generally, trocar Yoon not show that did in prior dence and of itself establishes the simply contribution a reduction to Choi’s was Price, conception.” 988 F.2d at 1196. practice concept using any broader case, In this Choi’s sketches show the in- detaining means commensurate with parties agree vention. The that Choi made Thus, scope of claim 47. Choi showed enti- the sketches. The contest involves whether co-inventor for tlement status of this Choi conceived of the material claim as well. merely sketches or drew what Yoon con- many ceived. The district count noted cir- C. Corroboration cumstantial corroborating factors further testimony As corroboration for his (1) Choi’s claim: Yoon’s need for co-invention, proffers Choi sketches of his (2) electronics; person expertise in pos work. These sketches were Yoon’s (3) electronics, background Choi’s Yoon’s parties session since their creation. The do proposal that he and Choi should work to- however, dispute, that Choi fact creat gether develop products, including new Instead, ed the sketches. Yoon contends (4) trocars, safety their informal business Choi, that first he disclosed the invention to (5) relationship, length they of time who then made the sketches to illustrate (6) together, any pay worked the absence of what he learned from Yoon. Absent sufficient work, similarity to Choi for his be- corroboration, inventorship solely would turn patent figures, tween Choi’s sketches and the credibility on a contest between Yoon and court, however, the letter in which Choi The district stated Choi. found suf longer ficient corroboration. he could no be a “member” of Yoon’s Additionally, business. intro- together, alleged Taken co-inventor’s expert testimony duced that some of the testimony corroborating and the evidence sophisticated concepts sketches dealt with inventorship “by must show clear and con- only engineer an electrical or technician vincing requirement evidence.” This is not Consequently, would understand. the dis- lightly. to be taken Under the “rule of rea- evidence, presenting trict court found that was corroborating son” standard for Sugavanam, drawn, Holmwood v. ideas to Yoon as the sketches were (Fed.Cir. 1238-39, way rather than the other around. 1991), trial court must consider corrobo- appeal, reweigh On this court declines to context, rating necessary evidence in make Instead, the evidence. this court determines determinations, credibility assign appro- that the record shows that corroboration evi- probative priate weight to the evidence to dence this case satisfies the “rule rea- convincing determine whether clear and evi- Thus, only son.” this court must further supports dence a claim eo-inventorship. assess whether the district court’s factual Accordingly, there need not be corrobora- conclusions, given convincing the clear and every tion for factual issue contested standard, clearly evidence were erroneous. Price, parties. example, junior For Here, sketches, given testimony, Choi’s party in an proceeding proffered interference circumstances, and the established in con- invention, drawings of his affi- conceived his testimony, expressly trast with Yoon’s found davit that he had conceived the invention court, credibility by to lack the trial date, before critical and an affidavit from court discerns no clear error. person stating third that she had seen one determination, reaching In this this court However, drawings of the before that time. alleged has also considered inconsistencies in junior party corroborating lacked evi- 1992, testimony. August In Choi’s U.S. Sur- dence that it was he who had created the gical’s copy counsel first sent Choi a of drawings party because the third could not figures the ’773 Choi circled drawings attribute the to him. This court describing that claims that which put held “all of the evidence forth” he claimed to should have been considered and acknowl- have contributed. Choi circled some claims

1465 agreement simply to have had a This sort of he not now assert assures the that does not circle inventing. in He also did role licensee that it will be able to defend the to have he now claims co-invented. claims property purchased in which it has an inter- However, court have rea- the district could est. sonably layman, untrained in the found that Furthermore, a pecuniary witness’s law, reasonably of language goes interest in the outcome of a case interpreting language. in claim More- err probative weight testimony, of not its admis over, legal might well have confused the Choi See, sibility. e.g., Den Norske Bank AS v. (which justi- distinction between Boston, 49, First Nat’l Bank 75 F.3d 58 finding inventorship) and reduction fies a of Cir.1996) (1st (holding not). that interests of (which event, ex In practice to does pert employees plain witnesses who were holding this court affirms the district court’s weight testimony, was a co-inventor of claims 33 and tiff affected the of their that Choi 47.4 admissibility). not its The district court did by not abuse its admitting discretion Choi’s

III. ADMISSIBILITY ISSUES evidence, testimony subject into to cross- might agree expose examination that Choi’s Under the terms of its license bias. ment, Surgical gave U.S. Choi immediate $300,000. payments

payment of Future IV. SCOPE OF THE CHOI-U.S. $100,000 up per year years are to ten SURGICAL LICENSE contingent Surgical’s prevailing on U.S. Questions patent ownership are distinct return, granted this action. In U.S. Choi questions inventorship. from See Beech Surgical an exclusive license “Choi’s trocar Corp. 1237, Corp., 990 EDO F.2d Aircraft addition, agreed related inventions.” In (Fed.Cir.1993). 1248, 1572, USPQ2d testify proceeding to correct inventor- principle, In accordance with this this court ship of the ’773 and to “render all pre- has nonetheless noted that “an invention by requested reasonable assistance [U.S. sumptively belongs to its creator.” Teets v. Surgical] to defend or settle” this action. As 403, Chromalloy Corp., Gas Turbine concluded, court these license the district 1695, (Fed.Cir.), cert. payment agreement terms do not constitute — denied, -, 117 S.Ct. testimony as a fact witness. (1996). L.Ed.2d 402 pertain court reviews matters This Indeed, context of inven admissibility ing to the of evidence under the torship, presumptively5 each co-inventor particular regional circuit where law of the pro rata interest owns undivided appeals from court the district would normal respec no matter what entire their ly he. The Second Circuit accords trial provisions tive Several contributions. courts broad discretion to determine the ad Perry Patent Act combine to dictate this rule. 35 missibility of evidence. See v. Ethan (2d Cir.1997). Allen, Inc., 1984,6 § U.S.C. as amended states correction, appellate To a trial court warrant a contri that a inventor need not make must commit an abuse of that broad discre every “to the matter of claim bution tion. See id. patent.” amending section 116 as joint inventorship, Congress did not make agreement A license binds corresponding modifications as to own participate litiga- in subsequent inventor to ership. example, Indeed, For section 261 continues very agree- tion is common. Yoon’s provide “patents the attrib- ment with Ethieon contains a similar clause. shall have apply appeal here. The Patent 4. Ethieon does not the district court’s 6.The 1984 amendments determination that Choi’s claim of co-inventor- Act of states that with Law Amendments ship equitable estop- was not barred laches or exceptions certain "the amendments made pel. apply Act ... shall to all United States before, on, granted the date of ents or after 98-622, 1984].” Pub.L. No. [Nov. enactment not claim that Choi had a con- Ethieon does 106(a) (1984); duty patent rights see also Smith- assign 98 Stat. tractual or other his Diagnostics, 859 F.2d at 888-89. to Yoon. Kline personal property.” provision utes of This as limited to “Choi’s trocar related inven- suggests property rights, including tions,” that own- comprise only which his contributions whole, ership, patents attach to as a not patent. to claims 33 and 47 of the ’773 Moreover, claims. section individual meaning phrase “including tro- speak “joint of of continues to owners cars ... described in claimed the ’773 and/or Thus, patent,” joint not owners of a claim. a patent” depends meaning on the of the word joint enjoys inventor as to even one claim “including.” merely clarify If to construed presumption ownership of in the entire inventions,” meaning of “trocar related ent. modifies, phrase it “including” then could presents prospect This rule that scope grant. limit the of “Including,” Choi’s only might gain a co-inventor of one claim however, operate phrase can also as a of ownership entitlement to of a reading, addition. Under this broader noted, dozens of claims. As the Patent Act phrase “trocar related inventions” covers accounts for that occurrence: “Inventors just specified more than the material in the may apply patent jointly though for a even “including” phrase. ... each did not make a contribution to the every possible, of If matter claim.” 35 U.S.C. this court must view a added). Thus, (emphasis single provision way where inven of a contract that cooperate in tors choose to the inventive gives meaning provides to—and internal har process, their inventions become mony among parts of the contract. See —all joint property express agree without some Barnard, v. Barnard Conn. 570 A.2d case, contrary. ment to the Yoon (1990). context, Read the “includ effectively must now share with Choi owner addition, ing” phrase phrase is a not a claims, ship all even those which he scope limitation on the of “trocar related Thus, invented himself. Choi had the example, agreement inventions.” For power rights patent. license the entire not, states Choi “has not ... and shall This court next examines the extent grant any person any ... right other or which power. Choi exercised that This court make, any license to use or sell of his trocar interpretation reviews the of contractual lan any related inventions or device described or guage, including agreements, license as a scope within the of the claims of question Corp. of law. See Intel v. ULSI added). patent.” (emphasis the ’773 In addi Tech., Inc., Sys. 27 tion, states, agreement hereby “Choi (Fed.Cir.1993). State grants Surgical] right to [U.S. the sole to sue law, law, in this case Connecticut controls in any infringer patent....” of the ’773 If the Thus, interpretation. matters of contract scope encompass of the license did all of review, making adopts its this court the ordi rights Choi’s as a owner the ’773 nary meaning of contract terms common patent, supplementary provisions these were Socha, possible. whenever See Sturman v. Rather, inexplicably much too broad. in con (1983). 191 Conn. 463 A.2d text, grant Choi’s meant to license all of his granted rights

The license which Choi patent. owner under the ’773 Surgical U.S. states: Thus, the interpretation district court’s hereby grants Surgical to U.S. the Choi license was correct as a matter of exclusive, worldwide and license to law. make, made, use, have market and sell inventions, Choi’s trocar related including V. RETROACTIVE LICENSURE having trocars shields and those described Finally, claimed in the ’773 argues This Ethicon if even and/or license is retroactive to the date on which agreement the license is enforceable as to the the ’773 issued. entire it should still be allowed to proceed against Surgical U.S. to recover language reads this to cover all damages pre-license infringement. trocars “described Ethi claimed ’773 and/or patent,” encompassing con contends that entire ’773 to hold otherwise would and more. Ethicon reads language Schering the same contravene the Corp. decision SA, applicable provision, Schering contractual Roussel-UCLAF (Fed.Cir.1997). This court prevent granting could not Roussel from a challenge with Ethieon’s to the retro- agrees to license Zeneca:7 license, af- of Choi’s but must active effect grant by of a license [T]he one co-owner of the case based on Choi’s firm the dismissal deprive cannot the other co-owner of the join plaintiff suit. refusal to as right damages to sue for past accrued for Schering, Schering, In Roussel and the infringement. require That would a re- suit, patent two co-owners of the entered lease, license, rights not a and the aof whereby granted agreement into an each the co-owner, patent agreement absent to the parties right a unilateral to third other sue contrary, granting do not to extend a re- Schering then to en- infringement. for sued by that lease would defeat an action other Zeneca, join proceeding Inc. from damages past co-owners to recover for in- planned allegedly infringing prod- of an sales fringement. joined in the action as Schering uct. Roussel Id. at 345. later, involuntary plaintiff. an Two weeks Thus, Choi’s “retroactive license” to U.S. practice granted Roussel Zeneca a license to Surgical attempts operate to as the combina- patented district court invention. The prospective tion of a release a license.8 Schering appeal- Schering’s dismissed suit. Surgi- Nonetheless cannot release U.S. ed. liability past cal from its accrued dam- Schering argued that because appeal, On Ethicon, only ages liability to from to him- granted Schering Roussel had a unilateral self. sue, right grant to Roussel could not now Schering that license to Zeneca. contended principle governs One more settled incompatible grant one was with the other. case, An infringe however. action for rejected Shering’s argument, The court rea- join plaintiffs ment must all co-owners. soning right to license and the “[t]he Mackenzie, See Waterman v. 138 U.S. incompati- ... right unilateral to sue are not (1891) S.Ct. L.Ed. 923 ble, granting and the of one does not neces- (“The patentee may, by assigns or his instru sarily imply relinquishment of the other.” writing, assign, grant, convey, ment in acknowledged Id. at 345. This court (2) ...; either the whole or critical distinction that a license to a third part or share of that exclusive undivided party only operates prospectively. Absent right; right or the exclusive under contrary, agreement a co-owner can- specified part throughout within and grant not a release of another co-owner’s States. A transfer of either of United right damages. Consequently, to accrued assign these three kinds of interests is granted right has a unilateral co-owner who ment, properly speaking, and vests to sue to another co-owner also license a assignee a title so much Nevertheless, party. by third virtue of the itself, infringers. In right with a to sue sue, right unilateral the second co-owner case, jointly assignor. second with the join can still force the first co-owner to cases, first third in the name of the infringement against the action licensee to added)); assignee (emphasis alone.” Moore v. the second co-owner’s recover accrued dam- Wall.) Marsh, (7 19 L.Ed. Thus, ages past infringement. prospec- (1868) (“[W]here assignment is of an per incompatible [an] se with a tive license is sue, and, barring any part, the action unilateral other undivided provided by Schering Although patent rights 7. A twist “retroactive licenses” of facts of was Schering seeking only prospective specifi- was relief. have been enforced the courts without Therefore, Schering evapo- court's distinction cally referring way, to them in this all of these is, specific rated under the facts of the case—that grant- have "retroactive licenses” cases involved Schering alleged appeal until for the first time on See, e.g., Studiengesellschaft ed a sole owner. pre-license conduct that some of Zeneca's consti- Kohle, Hercules, Inc., 629, 41 M.B.H. v. infringement. Schering tuted court remand- (Fed.Cir.1997). USPQ2d 1518 ed, part, Schering pursue allow these potential pre-license infringement claims. See Schering, 104 F.3d at 347. 1468 that, brought every infringement

should be ment suit. It is true in some circum- subsequent assignment, committed to the stances, the decision of one co-owner to not joint patentee the assignee, names of the join infringement may suit have the same interest.”). representing as the entire release, effect granting as but this is not example, true in all cases. For when co- Further, as a matter of substan granted owners have each other a unilateral law, patent ordinarily tive all eo-owners must sue, right to each has right waived his not to join plaintiffs consent to infringe suit, join infringement and either of them Consequently, ment suit.9 “one co-owner has right impede join the to the can other co-owner’s force the other to a suit to collect ability infringers by refusing to sue to volun infringement damages. accrued tarily join in Schering, such a suit.” 104 Because Choi did not consent in- to an F.3d fringement against Surgical suit U.S. support This rule finds in section 262 of longer indeed can grant no consent due to his the Patent Act: of an exclusive license with its accompanying any agreement the absence of sue,” “right complaint to Ethieon’s lacks the contrary, each of the owners of a participation patent. of a co-owner of the make, use, patent may sell, offer to or sell Accordingly, this court must order dismissal patented

the invention within the United of this suit. States, import patented or the invention States, into the United without the consent VI. CONCLUSION accounting and without the to other owners. Accordingly, judgment the of the United States District Court the District of exploit patent This freedom to Con- the without a duty to account to other necticut is co-owners also al- affirmed. freely

lows co-owners to license others to exploit without the consent of COSTS other Schering, co-owners. 104 F.3d at 344 party Each shall bear its own costs. (“Each ownership rights carry co-owner’s others, with them right right license AFFIRMED. require

that also does not any the consent of co-owner.”). Thus, other congressional NEWMAN, PAULINE Judge, Circuit policy expressed by section 262 is that dissenting. mercy co-owners are “at the of each other.” dissent, I respectfully for whether or not Lawton, Willingham 1340, 1344, v. 555 F.2d Mr. Choi made an inventive contribution to (6th Cir.1977). USPQ 194 252 fifty-five two of the claims of the ’773 case, Although in this the result is he is not fifty-three owner of the other effectively no different if than Choi could claims of the Neither the law of grant a release to any liabili invention property nor the law of requires, so Ethicon, ty to it emphasized should be and indeed these laws mandate otherwise. principle governs this case is not The district court found that Mr. Choi incompatible principle with the enunciated in made a contribution to two claims of the ’773 Schering. In Schering, this court noted that patent. Although precedent readily would as the granting right of a unilateral to sue is not place Mr. category Choi’s work incompatible where- right with grant a license. services, Similarly, ‘may “an inventor this court use the inability notes that the ideas grant incompatible process release is not and aid of others in the perfecting right infringe- refuse to consent to an his losing right invention without his to a First, exceptions 9. Two established obligation may exist. among when arise contract co- If, granted owner has by agreement, an exclusive li- owners. a co-owner waives his cense, suit, relationship he stands in a join of trust to his to refuse to his co-owners permit subsequently licensee and must join the licensee to sue in against force him to in a suit Independent Lawton, his name. See Telegraph infringers. Willingham Wireless See Am., 459, 469, 1340, 1344-45, Corp. (6th Co. v. USPQ Radio 269 U.S. Cir. 166, 169-70, (1926). Second, 1977). S.Ct. 70 L.Ed. 357 ” however, Libbey- naming, au- Shatterproof Corp. v. others. Such does not patent,’ Glass Co., 613, 624, 225 tomatically Owens Ford endow assistant with full and (Fed.Cir.1985) (quoting USPQ invention, ownership of common the entire Energy States Atomic v. United Hobbs including in- the contributions of all others Comm’n, USPQ F.2d cluding originator. That is not a reason- Cir.1971)), (5th the court’s find- 724 district the consequence change able of in the law of clearly in two is not ing as to the claims that naming inventors occurred in 1984. my primary conclusion not error. That is the My primary concern is with concern. A. Law of The Joint Invention deciding recognize, the court to failure of purpose § of the 116 The amendment of rights ownership rights, the effect on these remedy prob- increasing was to the technical 116, § amendment of 35 U.S.C. of the 1984 research, arising lems team for which ex- changed naming markedly the law of which law, isting require deemed simultaneous the patents, on authorized inventors by conception as well as shared contribution adjudicated. “joint here invention” claim, to every each inventor was named statutory change in 1984 the made Before patentees, producing pitfalls public to no “joint not have named a Mr. could been in its purpose. legislative history, As stated not patent, ’773 for he had of the inventor” “recog- § 35 the amendment to 116 U.S.C. en- jointly and contributed to the conceived of nizes the realities modern team research.” disputed is not that his It tire invention. 28,069-71 (1984) (statement Cong. 130 Ree. of two of is limited elements contribution Kastenmeier). Rep. of person patent fifty-five claims. Such the “joint pre-1984 inventor” under was not precedent permit nam- Before 1984 did not required joint invention That law law. person not ing as an inventor who did ge- production of the “simultaneous be the share the of the invention and parties.” v. of both Steams and labor nius not contribute to of the claims of who did all (C.C.D.Mass. 1175, Barrett, 22 F. Cas. 1181 Sarett, In re patent. See 51 C.C.P.A. the J.). turn, 1816) ownership, in (Story, Joint 1005, 7, 1180, USPQ 327 F.2d 1010 n. 140 principle joint invention. on this of was based (CCPA 1964) (“It 474, be 479 n. 7 should inven- who on an Those assistants worked patent legally contain clear that the could not originator of of the the behest tion at exist- a claim to Sarett’s sole invention under “joint legal not achieve status idea did it would been the ing law because not have Having an in- legal no status as inventor.” joint patentees.” (emphases invention ventor, property no acquired such assistants Hamilton, In re 17 C.C.P.A. original)); their con- in the invention virtue of 758, 759, 833, reh’g, 17 op. den. 37 F.2d Dusen, 90 Collar Co. v. tributions. See Van 1930) (CCPA 914, 889, 38 F.2d 890 C.C.P.A. Wall.) (23 530, 563-64, 128 23 L.Ed. portion of (joint could not on issue (1874) be- (ancillary discoveries of assistant inventor). by single If differ- made invention original princi- person who conceived long persons made inventive contribution ent sub- ple they “constitute the whole unless to differ- parts invention or various v. improvement”); Agawam Co. stance of the legalistic problems ent claims of a (7 Wall.) 583, 602-4, Jordan, 19 74 U.S. soluble, readily even that arose were (1868) (same). Agawam L.Ed. confusing expensive, complex, and often true explained that than a Court one less separate applica- filing expedient of “appropri- was from inventor forbidden claims. separate tions on ating] to himself the entire result of originator, progress technology or exacerbated and toil of the ingenuity power subsequent in- puffing] inventorship problems. it Patents were patent.” at infringer to defeat the 74 U.S. named simply because all validated claims; not contribute to all inventors did when there patents were also invalidated § 116 The 1984 amendment of 35 U.S.C. who to some of the claims were contributors naming of all permitted the as an inventor Jamesbury Corp. v. named. See were not development persons who assisted 1384, States, thereof, 516, 207 Ct.Cl. 518 F.2d idea, with United parts originated or (1975) (inclusion 1395, 187 time, USPQ 720 of more the same each did not make the pat contribution, or less than the true inventors renders type same or amount of or invalid); Fly Corp. ent void and Amax Ash each not make a did contribution to the United, States, 756, 1041, 206 Ct.Cl. every matter of claim of the (1975) (“Where USPQ 98-622, Pub.L. 98 Stat. Nov. or than the more less true inventors are 1984. The amendment identified the three Hobbs, named, void.”); is arisen, major pitfalls that had and removed 864-65, USPQ (patent at 724 on them. invalid); invention issued to one inventor is This amendment did not also deal with the Found., Iowa State Univ. Research Inc. v. patent ownership, laws of and did not auto- Sperry Corp., 444 Rand F.2d matically convey ownership of the entire (4th Cir.1971) (“the USPQ law has everyone ent to who could now be as named strictly patents only grant been construed to inventor, an whatever the contribution. The inventors”); to the true Pointer v. Six Wheel simply permitted persons amendment to be 153, 157-58, 43, Corp., USPQ 177 F.2d 83 46- document, patent named on the whether as (9th Cir.1949) (patent only 48 issued to one of minor contributors to a subordinate embodi- void); Ritchie, the inventors is Shreckhise v. ment, partners or full in the creation and (4th 593, 595, 138, USPQ 73 140-41 Cir.1947) development of the invention. The (same, cases); owner- citing Thropp & who, ship relationships among persons Thropp Sons Co. v. De Laski & Circular Co., (3d 941, 116, § Tire F. Woven 226 947-48 Cir. under could recognized now be as 1915) (joint patent on invention, invention of one is contributors to the is irrelevant to all); Mfg. Dazey invalid as to Rival Co. v. 116, purpose § of the amendment of and Co., 91, 101, F.Supp. USPQ Prods. 358 177 consequences. to its nothing Section 116 has (W.D.Mo.1973) (patent 439-40 issued patent ownership. to do with join others); one is invalid for failure to (C.C.S.D.Ill. Tenk, Stewart v. 32 F. 666 Ownership B. The Law of Joint 1887) (claim to sole invention is invalid pre-1984 joint The rule of ownership of Fisher, joint patent); 11 Worden v. F. joint readily inventions can be understood (C.C.E.D.Mich.1882) (when per 508-9 two context, its historical for a legally cognizable parts they sons invent distinct of machine “joint required mutuality invention” of inter- Indeed, separate patents). should out take partnership action and a real in the creation patent application at the time the ’773 was development and of the invention. On practitioners filed in most believed that foundation, “joint also, justly a inventor” was separate application required if was it was legally, equal owner of the idea and of present, example, desired to the two Pointer, any patent thereon. 177 F.2d claims that contain Mr. Choi’s contribution. (“as 157-58, USPQ just 83 at 46-48 the cases Pearne, generally See John F. Must Each clearly, in cited show order that an invention Application Inventor Named in a Patent truly joint invention, be called it must Have Made Inventive Contribution to appear by convincing proof clear and that the Thereof?, Each the Claims 58 Pat. J. Off. of two inventors in evolving collaborated Soc’y (discussing then-proposed 205 device”); patented Chisum, 1 see Donald S. 116). § amendments to (rel. § on May Chisum Patents & n.2 202[2] As team research increased with the 1987) (“Only single, unitary where the same growth technology-based industry, of so did product idea of means is the of two or more dilemma, for the of rules inventor- minds, pari passu, working in communi- ship readily adaptable were not to the devel- other, cation conception truly with each is the opment complex of inventions. It became invention,” the result a quot- apparent legislative remedy was needed. Robinson, ing 1 William C. The Law Pat- provided § The amendment of 35 U.S.C. (1890)). § ents Inventions for Useful simple complex problem: solution to a patent ownership § The law of [second has its roots sentence] Inventors apply patent jointly though property although for a the common law of even — they character, physically together patent peculiar did not work or at has its own for it intangibles. usually Die & tenants in equal with See Crown common are deals and are Works, Nye presumed Tool & Machine equal Tool Co. unless circumstances indi- 254, 258, 24, 40, otherwise”). 67 L.Ed. 516 43 S.Ct. patent property cate As be- (1923) (a statute); patent a creature of is came precisely personal viewed more as How.) (10 Wilder, Gayler v. 51 U.S. property, § see 35 concept U.S.C. (1850). incidents of 13 L.Ed. 504 Certain tenancy in adjusted common was to that of ownership or clari- have been created interest, although undivided with no sub- statute, 262, yet § see 35 U.S.C. fied change stantial in legal rights. rules, provided common law the basic major change After the 1984 tenancy concepts in com- manifested “joint amendment 116 made inven- mon and undivided interests that courts have tion,” by authorizing naming any con- ownership disputes. upon drawn tributor to claim a legal in jurisprudence governing property premise person that each named had made a law. generally terests is a matter of state equal full and contribution to the entire property is the creation of Even when ented invention became obsolete. See statute, private rights usually are federal Diagnostics, SmithKline Inc. v. Helena property. state laws of This has defined 878, 888-89, Corp., Labs. long recognized respect been (Fed.Cir.1988) cases). (collecting ownership and transfers. See Jim Arnold implementation It is not an of the common Inc., 1567, Corp. Hydrotech Sys., v. property, law of statutory or its embodi- (Fed.Cir.1997) 1572, 1119, USPQ2d 42 1123 ments, persons, to treat all however minor (“the question patent right of who owns the contribution, their as full owners of the en- typically question is a and on what terms property tire aas matter of law. The law courts”); exclusively v. for state Roach given had never a contributor to a minor Crouch, 400, USPQ2d 524 N.W.2d 33 1361 portion of an invention a full in share (Iowa 1994) (patent ownership properly issue originator’s patent. court). equally in It triable state is estab inventorship lished that owner By amending § in 116 order to remove an ship separate are issues. Beech antiquated pitfall whereby patents Aircraft were be- 1237, 1248-49, Corp. Corp., v. EDO invalidated, ing unjustly legislators sure- (Fed.Cir.1993). 1572, 1582 26 ly inequity. did not to create intend another Apparently disputes concerning patent judges might Most of no one foresaw that ownership Supreme routinely that reached the Court pre-1984 ownership transfer con- invention, joint assign- not with but dealt cepts changed inventorship into the law. I The ments and other transfers. oft-cited upon have come no discussion of this anoma- Mackenzie, ease of v. 138 U.S. Waterman ly scholarly on various articles the amend- 252, 11 34 L.Ed. 923 dealt S.Ct. See, Carstens, § e.g., ed David W. Joint dispute among spouse with a the inventor’s § Inventorship under 35 U.S.C. 73 J. assignees concerning ownership various Soc’y (discussing Pat. Off. amend- pen patent, inventorship. the fountain of 116); Fasse, Muddy §ed W. Fritz The Me- Occasionally ownership of of issue taphysics Inventorship: Cleaning Joint of property arose based on whether the claim- Up Amendments to 35 U.S.C. 1981/. After actually fully ant in the creation of shared (1992), § 5 Harv. J.L. & Tech. 153 at eases, supra, In such cited the invention. (citing implementing 201-2 PTO rules “joint the decision on invention” also decided referring possibili- § to the amended 116 and ownership, person the issue of for a who had ty ownership sub- of lack of common fully shared the creation of the invention matter, ject assignment in the sense of obli- joint owner the entire was deemed to be of gations separately-employed inventors to joint patent property. premise this each On employers, yet overlooking other distinct di- occupy entirety inventor was deemed ownership problems). vided matter, patented subject legal on a bar, recog- In the case at the district court theory tenancy in common. See Richard ¶ Powell, originated nized that Dr. Yoon the funda- Property R. 602[5] Powell on Real (1997) (“undivided major aspects its concept fractional mental and the shares held court, however,

implementation. party The con- in accordance with Fed.R.Civ.P. 19. requiring strued the law as that since Mr. Mackenzie, Nor do Waterman (in “joint Choi was as a named inventor” 255,11 Marsh, S.Ct. at Moore v. 74 U.S. retroactivity accordance with legislated (7 Wah.) 515, 520, (1868), 19 L.Ed. 37 or the 116) § for the amendment to he automatical- other majority. cases cited There is ly owned an undivided interest in the entire involuntary joinder no barrier of a patent, and had the unencumbered and un- joint inventor co-owner under Rule and/or fettered to alienate an interest if bring such is needed to before the court all Choi, entire Thus Mr. who would not persons necessary deemed to the suit. See pass pre-1984 inventor, test of was Inc., also Howes v. Components, Medical property nonetheless awarded full rights (E.D.Pa.1988) (“Rule F.Supp. the entire invention and as if he had inappropriate any ‘makes contention that been a true inventor of all the claims. per indispensable co-owners are se panel majority, error, confirming this ”). infringement Further, suits’ Mr. Choi is holds that Mr. Choi’s contribution to two already party, before the court having as a claims means requires that Yoon “must intervened, voluntarily by general appear- effectively now ownership share with Choi ance. claims, all the even those which he invented Thus I must also dissent from ruling by himself.” That is incorrect. As I have my colleagues. discussed, the law of ownership shared was invention, founded on shared a situation that

admittedly prevail. does not here Whether

or not properly Mr. Choi is now named un-

der 116 because of his contribution to two claims, he is not a owner1 and he does KAHN, Plaintiff-Appellant, Leonard R. right grant have the a license under all fifty-five theory claims. No law v. property supports such a distortion of owner- CORPORATION, GENERAL MOTORS ship rights. must, I respectfully, Thus dis- Defendant-Appellee. panel sent from the majority. decision of the No. 97-1277. Joinder, C. Issues of Rule 19 United States Appeals, Court of panel majority although holds that Federal Circuit. Mr. grant Choi’s of a fifty- license under all Feb. 1998. five claims of the ’773 does not have retroactive effect and thus does not relieve Denied; Rehearing Suggestion for liability past infringe- Rehearing In Banc Declined ment, powerless Dr. Yoon is to recover for March past infringement because Mr. Choi as join inventor refuses in the suit. Prece-

dent and the Federal support Rules do not ruling. Schering Corp. & Roussel-Uclaf Zeneca, Inc.,

S.A. v. (Fed.Cir.1997), by relied on panel majority, does not bar Dr. Yoon’s past

suit for infringement and does not bar joinder involuntary Mr. Choi as an 1. There indeed Dividing be a need for determination was filed. claims would respective interests of Dr. Yoon and Mr. comport practices. with common law See Real attempt Choi. Dr. Yoon’s to divide the '773 ¶ Property (discussing 607[1] "inherent reissue, although ent rebuffed the Patent see, laws); compel partition”, citing e.g., state ongoing litigation, Office because of the would Hamilton, Hamilton 597 A.2d 859-60 placed have the claims to which Mr. Choi con- (Del.Fam.Ct.1990) ("right par- of the co-tenant to separate patent, tributed into a in accordance absolute”). tition is almost practice patent application when this

Case Details

Case Name: Ethicon, Inc. And Inbae Yoon, M.D. v. United States Surgical Corporation and Young Jae Choi

Court Name: Court of Appeals for the Federal Circuit

Date Published: Apr 1, 1998

Citation: 135 F.3d 1456

Docket Number: 97-1269

Court Abbreviation: Fed. Cir.