IP Law Daily, PATENT—DMass: Individual Who Did Not Contribute to Patented Innovations Not a Joint Inventor, (Nov 8, 2012)

By William Zale, J.D.

Three patents relating to oxy-acetylene hand torches were not invalid for failure to name as a joint inventor an individual who did not contribute to the conception of the patented innovations, the federal district court in Boston has ruled (Irwin Industrial Tool Co. dba Lenox v. Bibow Industries, Inc., November 6, 2012, Woodlock, D.). In a declaratory judgment action brought by Lenox to establish the validity of U.S. Patent Nos. 7,373,947, 7,415,988, and 7,195,031, the court granted Lenox summary judgment, dismissed Bibow Industries’ counterclaim to name Christopher Bibow as an inventor, and held moot a counterclaim seeking invalidation of the patents.

The patents resulted from efforts at Lenox to improve means of storing and protecting small oxy-acetylene tanks, so-called “hand torches.” Christopher Bibow, president and owner of Bibow Industries, claimed that he should be named as a co-inventor because he provided some portion of the ideas, information, and technology upon which the Lenox patents are based.

To be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, the court observed. The only corroborated contributions Bibow made to the invention of the Lenox patents constituted at most the state of the art upon which Lenox employees proceeded to innovate, the court determined. There was, therefore, no genuine dispute of material fact over the question whether Bibow was a co-inventor of the Lenox patents.

Bibow argued that he contributed to inventing the “handle” and “new regulator” in the Lenox patents. The Lenox '031 patent discloses a gauge protector in independent claim 1, with an attached handle described in dependent claims 2 through 7. The innovation of the Lenox gauge protector claim is protection of the gauge and regulator. The innovation of the dependent handle claim is not merely a means of transportability; rather, it is a means of reaping the benefits of gauge protection without sacrificing transportability. The ideas for a tank handle advanced by Bibow did not involve any sort of gauge and regulator encasement, and thus did not involve the core innovation of the Lenox handle, the court determined.

Bibow’s contention that he made a contribution to the tank sleeve with pockets, as claimed in the Lenox '988 patent, followed a similar pattern to his contention regarding the regulator and new handle. His rigid support assembly, with a capacity to hold torch accessories, bears no resemblance to the novel elements of a flexible tank jacket with pockets, as claimed by Lenox, the court found.

The circumstances surrounding Bibow’s contention regarding a hose wrap followed the same pattern. Bibow did not conceive of the novel elements of the Lenox patents, according to the court. Bibow invented one way to organize the hose; Lenox invented another. Bibow’s invention of a wire appendage did not anticipate Lenox’s pair of flanges attached to its tank jacket, and does not allow Bibow to lay claim to Lenox’s separate innovation, the court found.

The case is Civil Action No. 11-30023-DPW.

Rachael Harris (Squire Sanders (US) LLP) for Irwin Industrial Tool Co. dba Lenox. Peter D. Prevett (Prevett & Prevett, LLLP) for Bibow Industries, Inc.

Cases: Patent MassachusettsNews