Ellsworth v. Moore

Informative decision only: persuasive authority, not binding precedent. When an inventor who earlier signed a declaration naming a joint inventor later claims sole inventorship in an interference and bears the burden by a preponderance of the evidence, the Board may find the burden unmet if the inventor does not explain factually what the deleted co-inventor did regarding the originally claimed invention and what claim change prompted the change of heart. The party with the burden should present that evidence in its case-in-chief, and a preponderance does not emerge when the evidence is evenly balanced. No prior precedent directly addressed this issue; the Board cites no prior Board decision on it. For the opposing party (here Moore, the senior party and named co-inventor), the decision means he can stand on the junior party's failure of proof, and no adverse inference arises from his not taking testimony. For the party seeking to delete a co-inventor, a bare sole-inventor declaration, a conclusory statement that the disclosure was his conception, and corroborating declarations that never mention the co-inventor will not carry the burden. The Board must also be given claim-by-claim proof, because it will not act as an advocate after briefing closes. The Board relied on Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371 (Fed. Cir. 2001), for the presumption that the named inventors are the true inventors, Linkow v. Linkow and Edelman (CCPA 1975) for the burden and the absence of an adverse inference, and Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988), for loss when the evidence is evenly balanced. LEGAL TEST OR STANDARD: The issue is whether Ellsworth established by a preponderance of the evidence that he alone conceived the invention of Counts 1-15. The inventorship named in an application or patent is presumed correct, and the challenger bears the burden. The party with the burden should present some evidence in its case-in-chief and explain why the inventor sought to be removed was added in the first place and should be deleted in the second. Where the evidence is so evenly balanced that no preponderance emerges, the party with the burden loses. The party must also read the evidence on each claim limitation, and need not prove sole inventorship of all claims to obtain a patent on those it does prove. TRIGGERING FACTS: Both Ellsworth and Moore signed declarations stating they were joint inventors. After allowance, Ellsworth sought to delete Moore, but the request was denied because Moore did not join in it. Ellsworth then filed an application with essentially identical claims and obtained an interference. His declaration did not explain what limitation added to or deleted from the original claims changed his view. He gave no testimony on Moore's involvement, and the Grudt and Fujioka declarations did not mention Moore. He declined the Board's invitation to explain his change of heart and to supply marked, element-numbered exhibits. KEY QUOTE: "However, any time an inventor--particularly in a contested case--has a change of heart about inventorship, the inventor's credibility necessarily becomes an issue." (Paper 54, p. 13) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If you are the junior party in an inventorship interference seeking to remove a previously named co-inventor, put into your case-in-chief a factual account of what the co-inventor did, why you earlier joined in naming him, and which claim changes altered your view. Also supply exhibits with hand-numbered elements read limitation by limitation on each claim. Do not rely on conclusory sole-conception statements or on witnesses who never address the co-inventor.