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.

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In a decision yesterday, the Federal Circuit upheld a district court's grant of summary judgment due to laches and applicable state statute of limitations in an inventorship case. The plaintiff, having waited more than eight years after finding out about the patents to file suit, claimed that an intervening reexamination should have reset the time for determining laches and that the defendant's "unclean hands" in failing to include the plaintiff as an inventor precluded the application of laches. The court held that "there is no rule that the issuance of a reexamination certificate automatically resets the six-year clock for the presumption of laches" and that a plaintiff relying on "unclean hands" to defeat laches must show that "the defendant's misconduct was responsible for the plaintiff's delay in bringing suit."

More detail of Serdarevic v. Adv. Med. Optics, Inc. after the jump.

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In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law.  

The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required application of patent law to determine whether co-inventorship existed for both conception and reduction to practice of an invention, and whether conception and/or reduction to practice took place while using the employer's facilities.  The Ninth Circuit held the district court erred in applying agency law to determine whether a second researcher's actions triggered the patent ownership provisions of the "employed" researcher.  The court remanded the case and ordered a new trial with proper jury instructions.

More detail of Los Angeles Biomedical Res. Inst. v. White after the jump.

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