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Co-Inventors Must be Named, Even Those who Contribute to One Aspect of One Claim

federal-circuit-cafc-007Vapor Point LLC v. Moorhead, No. 2015-1801, 2015-2003 2016 U.S. App. LEXIS 14649 (Fed. Cir. Aug. 10, 2016) (Before O’Malley, Chen, and Stoll, J.) (Opinion for the court, O’Malley, J.) Click Here for a copy of the opinion.

In an August 10, 2016 decision, the Federal Circuit affirmed a district court order directing the addition of co-inventors to issued patents.

Plaintiffs Vapor Point, L.L.C., Keith Nathan, and Kenneth Matheson (“Vapor Point”) brought suit against Elliott Moorhead, NanoVapor Fuels Group, Inc., and Bryant Hickman (“NanoVapor”) seeking to have Nathan and Matheson added as co- inventors on NanoVapor’s U.S. Patent Nos. 7,727,310 and 8,500,862, directed toward the removal of volatile fuel vapors from tanks in the oil and gas industry. Vapor Point also brought suit against NanoVapor on related state law claims.  NanoVapor counter-sued for infringement of the ’310 patent, and sought to name Moorhead as a co-inventor on Vapor Point’s U.S. Patent Nos. 7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763, which NanoVapor contented were patents based on Nano Vapor’s own volatile fuel vapor removal patents.

Following an evidentiary hearing on inventorship, the district court found that Nathan and Matheson were brought on by Moorhead to reengineer the technology disclosed in the ’310 patent, and therefore contributed to four “key concepts” in the ’310 and ’862 patents, warranting an order that Nathan and Matheson be added as co-inventors on the patents.  The district court also dismissed the case for infringement with prejudice since, following the addition of Nathan and Matheson as inventors, Nano Vapor lost standing to pursue a claim for infringement.  Enovsys LLC v. Nextel Commc’ns., Inc., 614 F.3d 1333, 1341 (Fed. Cir. 2010) (“When a patent is co-owned, a joint owner must join all other co-owners to establish standing.”).  Nano Vapor appealed.

On appeal, the Federal Circuit reviewed whether there was substantial evidence supporting the district court’s finding that Nathan and Matheson should be added as co-inventors.  In determining that the inventorship evidence below was sufficient, the Court reiterated that all inventors are required to be named even if their contribution is limited to a single aspect of a single claim, and that co-inventors need not have collaborated at the same time to be named.  The record below reflected that Nathan and Matheson, although at different times and in different ways, had each contributed to some of four key concepts in the patents at issue.

Lindsay Henner, Parker Hancock, and Puja Dave also contributed to this summary.

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