IP Law Daily, PATENT—Fed. Cir.: Ruling to name co-inventor of expandable garden hose patents affirmed, (Jun 9, 2023)

By Brian Craig, J.D.

Based on contributions and collaboration, the district court properly concluded an engineer was the co-inventor of patents for an expandable garden hose.

In a dispute over patents for an expandable garden hose, the U.S. Court of Appeals for the Federal Circuit has affirmed the decision by the federal district court in New Jersey declaring a nonparty engineer as co-inventor. The Federal Circuit held that the engineer significantly contributed to the conception of the patent and the contributions are adequately collaborated both by physical and circumstantial evidence. The Federal Circuit also held the district court did not err by making its inventorship determination without engaging in claim construction when there was no material dispute about claim meaning (Blue Gentian, LLC v. Tristar Products, Inc., June 9, 2023, Prost, S.).

Blue Gentian, LLC sued Tristar Products, Inc. (“Tristar”) for infringement of six patents relating to expandable garden hoses. Tristar counter-claimed to correct inventorship of all six patents. After an evidentiary hearing, the district court in New Jersey determined that a nonparty engineer should have been a named as co-inventor on all asserted patents. Accordingly, the district court ordered correction of the patents. Blue Gentian appealed to the Federal Circuit.

Claim construction. The Federal Circuit first found that the district court did not err in deciding inventorship without conducting claim construction. Blue Gentian argued that claim construction is a prerequisite to an inventorship hearing. But Blue Gentian did not otherwise present a material dispute about claim meaning. The Federal Circuit rejected Blue Gentian’s argument that the inventorship of a patent can only be corrected after a court construes the subject matter of each claim at issue. The appeals court found no prerequisite of claim construction. The panel held that the court is not required to prospectively address hypothetical claim construction disputes. Therefore, the district court did not err by failing to first conduct claim construction.

Contribution. The Federal Circuit also concluded the district court correctly found the engineer contributed significantly to the conception of at least one claim of each asserted patent. The party seeking correction of inventorship must show by clear and convincing evidence that a joint inventor should have been listed. An alleged joint inventor must show that that the inventor significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim. Here, the Federal Circuit found that a single meeting held in 2011 is central to the district court’s inventorship holding. The district court had sufficient evidence to determined that the engineer contributed: (1) inner and outer tubes attached only at the ends, (2) a fabric outer tube, and (3) an elastic inner tube that can provide force to retract the hose without a metal spring. Thus, there was sufficient evidence of contribution.

Collaboration. Additionally, the Federal Circuit concluded that evidence of collaboration supported the joint inventorship finding by the district court. An alleged joint inventor’s testimony standing alone is insufficient to establish inventorship by clear and convincing evidence. An alleged co-inventor must supply evidence to corroborate the testimony. Corroborating evidence may take many forms, including contemporaneous documents or physical evidence, circumstantial evidence, and oral testimony of someone other than the alleged inventor. In this case, the engineer showed the other inventor confidential information about hoses he had designed, discussed technical details about how he planned to manufacture his hose, and discussed alternative ways to build an expandable hose. The named inventor built off of those contributions and immediately began building prototypes of the expandable hose eventually claimed in the asserted patents. There was sufficient collaboration between the named inventor and the engineer based on the information exchanged at the meeting.

Therefore, the Federal Circuit affirmed the district court’s finding of joint inventorship.

The case is Nos. 2021-2316 and 2021-2317.

Attorneys: Andrew D. Lockton (McHale & Slavin, P.A.) for Blue Gentian, LLC and National Express, Inc. David Smart Stone (Stone & Magnanini LLP) for Telebrands Corp. Jon Steven Baughman (Groombridge, Wu, Baughman & Stone LLP) for Tristar Products, Inc.

Companies: Blue Gentian, LLC; National Express, Inc.; Telebrands Corp.; Tristar Products, Inc.; Ragner Technology Corporation

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