Explanation of prior art element in dependent claim insufficient to confer inventor status

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 […]

Continue Reading →

Purported inventor who waited eight years to file suit could not overcome presumption of laches

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 […]

Continue Reading →

Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions

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 […]

Continue Reading →

Equitable inventorship correction claim must be resolved after factually-overlapping fraud claim

The Federal Circuit issued a ruling Friday addressing the right to a jury trial in a case involving combined equitable (in the form of a correction of inventorship claim under 35 U.S.C. § 256 ) and legal (in the form of various tort claims) issues. The court held that the jury trial on the legal […]

Continue Reading →