Ethicon, Inc. v. United States Surgical Corp.

Citation. Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1998 U.S. App. LEXIS 1445, 45 U.S.P.Q.2D (BNA) 1545, 48 Fed. R. Evid. Serv. (Callaghan) 1226 (Fed. Cir. Feb. 3, 1998)

Brief Fact Summary. Ethicon (Plaintiff) brought suit against Surgical (Defendant) claiming patent infringement.  Defendant argued by claiming a co-inventor of the invention had provided them with a license to use the patent.

Synopsis of Rule of Law. (1) Testimony supported by sketches is adequate to show co-invention clearly and convincingly.  (2) Regarding even a single claim, a joint inventor enjoys a presumption of ownership of the entire patent.

Facts. Yoon (Plaintiff) and his exclusive licensee, Ethicon (Plaintiff), sued Defendant for infringement of Yoon’s (Plaintiff) patent regarding trocars.  A trocar is an essential tool for endoscopic surgery that makes small incisions in the wall of a body cavity for endoscopic instruments to enter.  The patented trocar lessens the danger of damaging internal organs by equipping the trocar with a blunt, spring-loaded rod that springs forward ahead of the blade or springs back into a protective sheath and protects against injury.  The patent also teaches the use of an electronic sensor in the end of the blade which signals the surgeon at the moment of puncture.  Choi (Defendant), an electronics technician, worked without pay on a project for safety trocars with Yoon (Plaintiff), who is a medical doctor and inventor of many patented devices for endoscopic surgery.  After eighteen months of collaboration, their relationship ended.  Yoon (Plaintiff) filed an application for a patent that same year for the trocar, naming himself as the sole inventor, without Choi’s (Defendant) knowledge.  Ethicon (Plaintiff) sued Surgical (Defendant) for patent infringement.  Choi (Defendant) intervened and claimed to be an omitted co-inventor of the patent and to have approved a retroactive license to Surgical (Defendant) under the patent.  Choi (Defendant) was found by the district court to be an omitted co-inventor and Surgical’s (Defendant) motion to dismiss was granted.

Issue. (1) Did Choi (Defendant) provide enough evidence with enough support to show clearly and convincingly co-invention of Claims 33 and 47?  (2) Do the agreement terms of the license agreement limit it to only the part of the invention contributed by Choi (Defendant) or to the entire part?

Held. (Rader, J.)  (1) Yes.  Enough evidence was presented by Choi (Defendant) with enough support to show clearly and convincingly co-invention of Claims 33 and 47.  Each joint inventor must contribute to the formation of the invention.  Only part of the work that produces the invention needs to be performed by each.  Therefore, a contribution to one claim is enough to be considered a co-inventor.  In this case, Choi (Defendant) envisioned part of the invention stated in Claim 33.  A picture of Claim 33 is illustrated in figures 18 and 19 of the patent.  Choi (Defendant) thought of and contributed to two features contained in the picture, locating the blunt probe in the shaft and allowing it to pass through an opening on the blade surface, therefore, contributing to the subject matter of Claim 33.  The elements contributed by Choi (Defendant) are included in Claim 33.  His contribution is supported by his testimony that it was his idea to extend the blunt probe through an opening in the trocar blade.  To corroborate his testimony, he provided a series of sketches he did while working with Yoon (Plaintiff).  Based on many circumstantial aspects, for example Choi’s (Defendant) background in electronics and expert testimony that some of the sketches dealt with sophisticated concepts that would only be understood by an electrical engineer or technician, it is obvious that Choi (Defendant) was presenting ideas to Yoon (Plaintiff) and not the other way around.  In addition, Choi (Defendant) also contributed to the conception of the subject matter of Claim 47.  The invention in Claim 47 is illustrated in figures 34-36.  The specification discloses the rod detaining method invented by Choi (Defendant).  His sketches and oral testimony by the parties verify this.  (2) No.  The terms of the license agreement do not limit it to only the part of the invention that Choi (Defendant)  contributed, but instead Choi (Defendant) enjoys a presumption of ownership in the entire part.  Regarding even one claim, a joint inventor enjoys presumption of ownership in the entire patent.  Therefore, Yoon (Plaintiff) must share ownership of all the claims with Defendant, even the ones he invented by himself.  Defendant therefore had the right to license rights in the entire patent.  Because Defendant is a co-inventor, he is also a joint-owner of the patent.  He did not consent to the suit against Surgical (Defendant) and therefore the motion to dismiss is valid.  Affirmed.

Dissent. (Newman, J.)  Whether or not Choi (Defendant) contributed an idea to two of the 55 claims of the patent, he is not a joint owner of the other 53 claims.  This is not required by the law of joint invention because it has nothing to do with patent ownership, but instead is concerned with the technical problems that come up during team research.  The law of joint invention allows persons to be named on the patent document, whether as minor contributors to a lesser embodiment or as full partners in the creation and development of the invention.  Ownership of the entire patent is not automatically given to every person who could be named as an inventor, regardless of the contribution made.  In addition, Choi (Defendant) is not required by the law of property to be a joint owner of the other 53 claims because all persons, no matter how minor the contribution, as a matter of law are not to be treated as full owners of the entire property.

Discussion. The majority seems to have disregarded equity among joint owners.