Herman v. Barnes

Informative decision only: persuasive authority, not binding precedent. When a party in an interference over inventorship of a patent (the party who claims to be sole inventor) seeks judgment that the patent names the wrong inventors, it must show by a preponderance of the evidence (1) that it alone conceived of each count before the critical date, and (2) why the patent's named inventorship is incorrect, with both its conception and its explanation corroborated. Each count is treated as a separate invention for these proofs, so the party cannot rely on a dependent count being obvious from, or depending on, a count it conceived, and it must show conception of every element of each count. Where the inventor's credibility is undermined, the party cannot carry its burden on the inventor's uncorroborated testimony. No prior precedent directly addressed this issue in the text beyond Ellsworth v. Moore, 61 USPQ2d 1499 (Bd. Pat. App. & Int. 2001), which the panel expressly says is not binding but provides guidance, and which it follows in setting a two-part showing. For the party seeking to correct inventorship, the decision means that proof of sole conception of the independent count does not carry the dependent counts. Each count needs its own corroborated proof of conception of every element, and an inventor who has signed a contrary oath faces a serious credibility problem. For the patentee (here, the named joint inventor), the decision means that a co-inventor who contributed to even one count defeats the challenge, and that the patentee can prevail without the Board reaching its opposition when the movant's proofs are deficient. The Board relied on 35 U.S.C. § 116, Concrete Pipe (508 U.S. 602) for the preponderance burden, Chou v. University of Chicago, 254 F.3d 1347, Pannu v. Iolab Corp., 155 F.3d 1344, and Eaton v. Evans, 204 F.3d 1094 (cited with Cf.), and In re Swartz, 232 F.3d 862, for the point that conclusory statements and an invitation to examine a voluminous record are insufficient. LEGAL TEST OR STANDARD: Following Ellsworth, the movant must prove by a preponderance of the evidence: (1) that he alone conceived of the invention of each of the 32 counts prior to 15 January 1999, the critical date, and (2) an explanation as to why the inventorship of the Barnes patent is incorrect. The conception and the explanation must be corroborated because an inventor's credibility becomes an issue when he has a change of heart about inventorship. Under 35 U.S.C. § 116, the other named inventor is a joint inventor if he contributed to the conception of a single count. The movant must show conception of each element of each count, to the exclusion of the other inventor. TRIGGERING FACTS: The interference was declared to resolve an inventorship dispute between an applicant and a patentee, with identical claims and counts that were the patent's claims. The movant had signed a joint declaration naming Barnes as co-inventor while believing himself sole inventor, and relied mainly on his own testimony. The patent attorney and the NASA assistant allegedly involved did not testify. The movant argued that dependent counts 6, 7, 25 and 26 were solely his because they depend from a novel independent claim or would be understood by one skilled in the art. The movant also agreed that relief required success on all 32 counts. The Board also dismissed the motion for procedural flaws: no explanation tying evidence to argument, and incorporation of arguments from a 49 page declaration to avoid the 25 page limit. KEY QUOTE: "In this interference, each and every count is a separate invention with respect to proofs demonstrating sole inventorship." (Paper 91, p. 20) PRIOR PRECEDENT AFFECTED: Follows Ellsworth v. Moore, 61 USPQ2d 1499 (Bd. Pat. App. & Int. 2001), which the Board describes as not binding precedent of the Trial Section but as providing guidance, adopting its two-part showing and its credibility statement. Also cites LeVeen v. Edwards, 57 USPQ2d 1406, 1412 (Bd. Pat. App. & Int. 2000)(Int. Tr. Sec. Precedential) for the bar on incorporating arguments by reference. No prior decision is overruled. PRACTICE TIP: If you are the party claiming sole inventorship, support each count separately with corroborating evidence, such as testimony from the patent attorney or other witnesses and documents showing each element, instead of relying on the inventor's word or on dependency from a conceived independent claim. Put the argument in the brief with specific citations to the evidence and explanations of how it supports each point, and seek a page limit waiver rather than incorporating a declaration by reference.