By Nate Andrews and John Evans

Deciding who invented patents can be “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972).  But identifying who contributed what, and most importantly, when they made those contributions, has profound strategic consequences for potentially invalidating prior art.  So when a patent owner changes its mind about who the inventors are to try to get behind prior art, can it ever just ask to go back to the way things were when its strategic interests change?

A recent Federal Circuit decision suggests that at least sometimes, they can. In Egenera v. Cisco Systems, a patent owner responding to an IPR petition asked the USPTO to remove a named inventor—but then it asked the district court to restore the removed inventor in later patent infringement litigation.  No. 2019-2015, -2387 (Fed. Cir. Aug. 28, 2020).  More particularly, the patent owner purportedly learned that all elements of the claims were conceived before the inventor joined the company.  And conveniently enough, that earlier conception date also meant that prior art cited in the IPR petition wasn’t prior art after all.  So the patent owner asked the USPTO to remove the inventor.  Ultimately the PTAB denied the IPR petition on the merits without reaching the earlier conception date issue, and the USPTO later granted the request to remove the inventor.

Fast forward to the patent infringement litigation.  The accused infringer argued that certain disputed claim terms were in means-plus-function format.  The patent owner disagreed.  The district court agreed with the accused infringer.  Then the accused infringer argued that because the deleted inventor invented the required means, the patent with its amended inventorship was invalid under 35 U.S.C. § 102(f).  The patent owner asked the district court to rename the deleted inventor under 35 U.S.C. § 256, which allows the correction of inventorship errors.  The accused infringer cried foul, claiming that judicial estoppel prevented restoring the removed inventor.  The district court again agreed with the accused infringer and refused to apply judicial estoppel.

The Federal Circuit, however, vacated and found judicial estoppel did not preclude renaming the removed inventor on the patent.  The court first affirmed the means-plus-function construction, which played a pivotal role in deciding judicial estoppel issues.

The court started with the accused infringer’s argument that § 256 does not reach intentional acts where, as here, the incorrect inventorship was deliberately sought by the patent owner.  But the court held “that ‘error’ in § 256 includes ‘all varieties of mistakes—honest and dishonest’—rather than only unintentional inaccuracy.”  Slip op. 16 (emphasis added).

The court then turned to the traditional judicial estoppel factors under New Hampshire v. Maine, 532 U.S. 742 (2001):

(1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped.

According to the Federal Circuit, the district court misapplied all three factors.  First, the patent owner had not actually taken clearly inconsistent positions.  Rather, it argued, alternatively, that the claims were not means-plus-function, but if they were, then the removed inventor should be restored because he invented the required means.  That a later adverse claim construction proved the patent owner wrong was key, as it again implicated the removed inventor.  (Query whether that is why the once-and-future inventor was named an inventor in the first place.)

Second, the patent owner had not succeeded “in persuading a court or court-like tribunal to accept its first position.”  Slip op. 21.  In the court’s view, a petition to correct inventorship did not rise to the level of persuading a court or tribunal, as it “contained no underlying statements of fact” and the USPTO simply “agreed that all the signatures and fees were in order” rather than “cast[ing] these statements into the crucible of examination.”  Slip op. 22.  The court cautioned, however, that its finding did not extend to statements made throughout “substantive prosecution, ex parte reexamination, or other quasi-adjudicatory proceedings.”  Slip op. 24.

Third, finding no judicial estoppel would neither unfairly benefit the patent owner nor prejudice the accused infringer.  Here, the PTAB denied IPR institution without reaching the issues surrounding amended inventorship and earlier conception date.  Slip op. 24.

Some aspects of the Egenera decision are hard to accept, most notably, that § 256 allows access to federal courts for patent owners seeking to correct intentionally deceptive inventorship errors.  But Egenera seems unlikely to have a much broader impact, given its fact-specific holdings.  The case does not hold that a patent owner is always free to change inventorship, no matter how courts construe patent claims down the road.  Nor is a patent owner free to litigate incorrect inventorship theories, at least outside the relatively ministerial process of petitions to correct inventorship.  Nor can a patent owner change inventorship to achieve an earlier conception date, but then seek to manipulate inventorship to avoid other invalidity on inventorship grounds after-the-fact.

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John is a trial lawyer having represented clients in many high-stakes and complex intellectual property matters throughout the country including Section 337 investigations in the U.S. International Trade Commission. He has represented clients in cases involving both utility and design patents, and has significant experience in litigation matters covering many fields, including pharmaceuticals, surgical implants, flash memory, computer peripherals, digital televisions, integrated circuits, and insurance, as well as vacuum cleaner, footwear, and lip balm design.