You Rub My Back, I’ll Rub Yours - Who’s an Inventor?
Posted by: Bruce in Validity, claims, tags: invalidity, InventorshipAhh, that feels good! Sitting in one of those massage chairs from Sharper Image or Brookstone can be quite comfortable. Wouldn’t it be nice if your car’s driver’s seat could give you a massage during that long commute. That’s what Schukra U.S.A., Inc. thought when they hired Nartron Corporation to design a control system that would use the existing actuators in motorized car seats to provide a massage function. What they got instead was a pain in the neck.
Actually, first they got the controller design they wanted, although Nartron obtained and retained a patent on the system. Then Schuka got another supplier, Borg Indak, to deliver the system. THEN they got the pain in the neck; Nartron sued Indak for contributory infringement. You might think that Schuka might have had the foresight to obtain the right to sublicense the patent for the purposes of procuring the parts, but that’s a different story.
As is almost par for the course, Indak fought back by claiming Nartron’s patent was invalid. The interesting twist was Indak’s motion for summary judgement; in it, Indak stated that one of Schuka’s employees (Benson) was an unnamed inventor, and the District Court agreed, essentially shutting down the infringement suit.
On appeal, the CAFC said “not so fast”. Just because Benson suggested using a “lumbar extension” to perform the in-seat massage didn’t mean he had contributed in a substantive, inventive way to the invention, which, after all, was the controller that drove the existing seat mechanisms. The court’s words are important for us to remember;
“One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.”
Moreover, a joint inventor must “contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.”
In this case it was clear to the court that the invention was the controller, which could operate on any car seat that had the motion mechanisms in place and that Benson had only pointed out to the real inventors that the lumbar extender was one of the available, prior art, mechanisms. Further, the CAFC said “Benson is not entitled to co-inventorship by simply posing the result to Nartron and leaving it to Nartron to figure out how to accomplish it.”
So, when naming the inventors on a patent application, make sure that the individuals have made a substantive contribution to the actual invention and not just pointed out how the invention might be used with existing products. Otherwise you might rub the CAFC the wrong way.
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