IP Law Daily, PATENT—D. Utah: Individual’s co-inventorship claims over Cricut Inc.’s machine patents denied, (May 14, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Court finds the claims barred by laches and lack of clear evidence demonstrating co-inventorship.

The federal district court in Utah denied an individual defendant’s motion to correct the inventorship of U.S. Patent Nos. 7,842,259 (the ’259 patent) and 8,647,366 (the ’366 patent) under 35 U.S.C. § 256(b) by adding her as a co-inventor in course of an unjust enrichment lawsuit filed by Cricut, Inc. The court cited patent laches due to unreasonable delay in filing the motion coupled with the individual defendant's failure to provide clear and convincing evidence that she should be named a co-inventor on the patents in question (Cricut, Inc. v. Enough for Everyone, Inc. , No. 2:21-CV-00601-TS-DAO (D. Utah May 13, 2024)).

Background. The plaintiff, Cricut, Inc., is a leading company in the crafting industry known for its innovative electronic cutting machines, allowing users to cut various materials precisely. The individual defendant, Desiree Tanner, owns the corporate defendant Enough for Everyone, Inc. and has been named co-inventor on seven design patents associated with Cricut’s machines and has received royalty payments according to an agreement between the parties.

The ’259 and ’366 patents involve machines related to the design patents for which Tanner is a named inventor. These utility patents cover the mechanical and functional aspects of Cricut's electronic cutting machines, distinguishing them from the design patents that focus on aesthetic elements. Cricut's lawsuit against Tanner emerged from disagreements over royalty payments and patent rights associated with these cutting machines, leading to allegations of unjust enrichment on Tanner's part. The instant motion was filed by Tanner seeking to correct the inventorship of the two utility patents by adding her name as a co-inventor.

Tanner's claims. Tanner argued that she should be added as a co-inventor, claiming that her omission was due to an error by Robert Workman, the then-CEO of Provo Craft (which later became Cricut). Tanner maintained that she conceived of the idea for the at-home cutting machines during a trade show in the fall of 2004 and that her contributions were crucial to developing these inventions. Tanner pointed to her inclusion in the provisional patent applications and her subsequent work on the machines as evidence of her inventorship.

Laches defense. Noting that a delay of more than six years establishes a rebuttable presumption of laches, the court found that Tanner’s claim was time-barred. The ’259 and ’366 patents were issued in December 2010 and February 2014, respectively, but Tanner did not seek to correct inventorship until December 2022. Tanner’s prior knowledge of the patents and her lack of timely action further supported the court’s decision to apply the presumption of laches.

Burden of proof. In evaluating the correction of inventorship claim, the court emphasized the necessity of clear and convincing evidence to amend a patent’s inventorship. The burden of proof lies with the party seeking the correction, and the named inventors are presumed to be correct. Tanner’s evidence, including her declarations and those of a colleague, was deemed insufficient to meet this standard. The court noted that the testimony lacked adequate corroboration, and contemporaneous documentation supported that Workman and other named inventors had conceived and developed the ideas before Tanner's alleged conception.

Joint inventorship doctrine. The court also considered the joint inventorship doctrine under 35 U.S.C. § 116, which allows for joint inventorship even if contributions are not equal. However, the court found that Tanner's involvement in the project was limited to design aspects and occurred after the conception and early development stages led by Workman and his team. The records and declarations from Cricut's inventors demonstrated that Tanner did not contribute significantly to the invention's conception or reduction to practice.

Design contributions. Furthermore, Tanner’s reliance on her inclusion in provisional applications and design contributions was insufficient to establish her as a joint inventor. The evidence showed that Tanner’s contributions were limited to her role as Creative Lead and did not pertain to the inventive aspects required for joint inventorship.

Conclusion. Ultimately, the court concluded that Tanner’s claim was barred by patent laches and that she failed to provide clear and convincing evidence to warrant a correction of the patent inventorship. The court, therefore, denied Tanner’s motion to correct patent inventorship.

The Case is No. 2:21-CV-00601-TS-DAO.

Judge: Stewart, T.

Attorneys: David Tobin (McDermott Will & Emery LLP) for Cricut, Inc. Leo J. Presiado (Brown Rudnick LLP) for Enough for Everyone, Inc.

Companies: Cricut, Inc.; Enough for Everyone, Inc.

Cases: Patent UtahNews