Can Inventors Who Contribute to Only One Claim or One Aspect of One Claim of a Patent, may be Listed on Patent?

This question was handled by United States Court of Appeals for the Federal Circuit in the case of VAPOR POINT LLC, KEITH NATHAN, KENNETH MATHESON, Plaintiffs-Cross-Appellants DON ALFORD, JEFFEREY ST. AMANT, Counterclaim Defendants-Cross-Appellants v. ELLIOTT MOORHEAD, NANOVAPOR FUELS GROUP, INC., BRYANT HICKMAN, Defendants-Appellants, decided on August 10, 2016.
Vapor Point, L.L.C., Keith Nathan (“Nathan”), and Kenneth Matheson (“Matheson”) (collectively “Vapor Point”) had sued Elliott Moorhead (“Moorhead”), NanoVapor Fuels Group, Inc., and Bryant Hickman (“Hickman”) (collectively “NanoVapor”) in the United States District Court for the Southern District of Texas, seeking to have Nathan and Matheson recognized as joint inventors under 35 U.S.C. § 256 on NanoVapor’s U.S. Patent Nos. 7,727,310 (“the ’310 patent”) and 8,500,862 (“the ’862 patent”). NanoVapor responded by suing Vapor Point, seeking to have Moorhead recognized as a joint inventor under 35 U.S.C. § 256 on Vapor Point’s U.S. Patent Nos.7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763 and for declaratory relief regarding inventorship of NanoVapor’s ’310 and ’862 patents. After a four-day evidentiary hearing, the district court issued an order granting Vapor Point’s motion for correction of inventorship and denying each of NanoVapor’s motions. Vapor Point moved for exceptional case status and attorneys’ fees. The district court issued a final judgment correcting inventorship, dismissing the action with prejudice, and denying Vapor Point’s motion for exceptional case status and attorneys’ fees. NanoVapor appealed the district court’s order on inventorship and its dismissal of the case. Vapor Point crossappealed the same order to the extent it holds that the case is not exceptional and that an award of attorneys’ fees is not warranted.
The patents-in-suit are generally directed “to the removal of volatile fuel vapors, also known as volatile organic compounds (‘VOCs’), from storage tanks and other holding vessels, generally in the oil and gas industry.
“NanoVapor is an industry leader in the field of [VOC] containment, including a process called Vapor Suppression System developed by Moorhead that aims to control or eliminate combustible and toxic gases in fuel storage and transfer operations. After working with Moorhead to help market this technology, Nathan became Chief Operating Officer of NanoVapor in 2007. NanoVapor later hired Matheson to help with the “commercial embodiment” of the technology being developed.
Consistent with § 256, the district court held a four-day evidentiary hearing to determine inventorship of the patents-in-suit. After the hearing, the district court issued an order denying NanoVapor’s claims of inventorship and granting Vapor Point’s to the extent Nathan and Matheson sought to be added to the ’310 and ’862 patents as additional inventors. In that decision, the district court addressed the “four key concepts in the ’310 and ’862 patents”: (1) using biodiesel as a vapor capture medium; (2) removing VOCs from a vessel containing fuel vapors and introducing them into a vapor capture medium (such as biodiesel); (3) using a particulatizer to create micro-sized VOC particles for treatment; and (4) using diffusion plates to distribute micro-sized particles across the vapor capture medium. The district court found that Nathan contributed to the conception of the first three of these four key concepts and that Matheson contributed to the third and fourth concepts. The district court denied NanoVapor’s claim that Moorhead should be a named inventor on Vapor Point’s patents. Because NanoVapor did not join Nathan and Matheson—now deemed to be two of the inventors of the patents-in-suit—in the infringement claims against Vapor Point, Vapor Point argued that NanoVapor “did not have standing to pursue [its] claim for infringement of the ’310 patent, eliminating any claim against Vapor Point.
Federal circuit found that the district court did not err in dismissing the case after determining inventorship. Federal circuit further found that the district court did not abuse its discretion in denying Vapor Point’s motion for exceptional case status and attorneys’ fees. Therefore, federal circuit affirmed the decision by holding that all inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent. A co-inventor does not need make a contribution to every claim of a patent. A contribution to one claim is enough.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

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