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Explanation of prior art element in dependent claim insufficient to confer inventor status
March 09, 2009

In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan. The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did not have standing to sue.

The Federal Circuit reversed, holding the allegedly missing coinventor was not actually a coinventor. Specifically, the only contribution made to the invention by this individual was limited to a single dependent claim, and the limitation added by that claim was a feature well-known in the art. However, an inventor "may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent." As such, the Federal Circuit held the alleged co-inventor's contribution to the invention was merely the "exercise of ordinary skill in the art," and therefore did not rise to the level of inventiveness. As a result, the failure to join this individual as a plaintiff did not defeat standing.

More detail of Nartron Corp. v. Schukra U.S.A., Inc. after the jump.

Shukra contracted with Nartron in 1996 to design a control system which would provide massage functionality to automobile seats. Nartron designed such a system and later received U.S. Patent Number 6,049,748 ("the '748 patent") covering this invention.

Borg Indak, Inc. ("Borg"), the original defendant in this case, is a supplier of parts to Shukra, and was accused of contributory infringement by Nartron of the '748 patent. Borg responded with a motion for summary judgment that Nartron had not joined a co-inventor of claim 11, Joseph Benson, as plaintiff. Claim 11 depends from claim 6, which depends from claim 5, which depends from claim 1. These claims are reproduced below (emphasis added):

1. A seat control module for introducing massage to a seat control with an adjustable lumbar support, and control actuators, the control module comprising:
a modular housing including in-line connectors for coupling said module to a seat control harness connector;
an intercept interface for receiving inputs from said control actuators;
a driver for repeatedly adjusting said lumbar support position through a predetermined range of movement in response to one of said control actuators; and
a transparency simulator for maintaining full function of said seat control and removing indications of repeatedly adjusting said lumbar support position.
. . .
5. The invention as defined in claim 1 wherein said transparency simulator comprises time-based response to manipulation of said control actuators.
6. The invention as defined in claim 5 wherein said transparency simulator generates a first output in response to a manipulation of a said control actuator for a period of time less than a first predetermined period, and generating a second output in response to a manipulation of said control actuator for a period equal to or greater than said first predetermined time period.
. . .
11. The invention as defined in claim 6 wherein said lumbar support adjustor includes an extender.

Before the district court, Benson admitted that the idea of providing an extender, as recited in claim 11, was known in the prior art. The named inventors also admitted that while both contributed to the majority of the invention, neither invented the inclusion of an extender as required by claim 11. Based on this evidence, the district court granted summary judgment in favor of Borg. Shukra appealed.

The Federal Circuit reversed. The court held that in order to be a joint inventor, the contribution to the invention as a whole must not be insignificant in quality, as measured against the full invention. Specifically, the court noted that someone who "simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor. As described in the specification, the focus of the patent is not on the physical structure of the seat, but rather the structure and function of the control module operating the seat. The Federal Circuit reasoned that because Benson's contribution was nothing more than adding a known prior art element, an extender, to the invention, his contribution did not rise to the level of significance required to be named as a co-inventor.

Therefore, because Benson was properly excluded as a co-inventor, Borg's motion to dismiss was improperly granted and the case was remanded to the district court.

To read the full decision in Nartron Corp. v. Schukra U.S.A., Inc., click here.

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