CORROBORATED EVIDENCE OF CONCEPTION NEEDED TO ESTABLISH CO-INVENTION

Tavory v. NTP, INC., [2007-1527] (October 27, 2008) [MICHEL, Newman, Bryson] The Federal Circuit affirmed summary judgment that Tavory was not a coinventor of certain NTP patents.
DISCUSSION: Tavory sued NTP suit seeking: (1) to add himself as a co-inventor to certain patents, (2) copyright infringement as to the software Tavory had allegedly written, and (3) unjust enrichment. The district court dismissed the unjust enrichment claim, and granted summary judgment on the inventorship and copyright claims. The Federal Circuit said patent is presumed to name the correct inventors, thus a putative unnamed co-inventor must prove his inventorship by clear and convincing evidence. The "touchstone" of inventorship is conception, which requires a "definite and permanent idea of the complete and operative invention." A co-inventor must prove he contributed to this conception of the claimed invention. The contribution must be more than simply the exercise of ordinary skill in the art. Simply reducing to practice that which has been conceived by others is insufficient for co-inventorship. A co-inventor need not contribute to the conception of every claim of a patent -- a single claim is sufficient -- and he need not "make the same type or amount of contribution" as the other co-inventors. As a result, no individual co-inventor need have a "definite and permanent idea of the complete and operative invention" so long as all of the co-inventors collectively satisfy that requirement. A co-inventor's own statements are inadequate to prove conception as a matter of law and thus must be corroborated by independent evidence. This evidence can be in the form of contemporaneous documents or the oral testimony of an independent witness. The evidence must establish that the inventor(s) made a "contemporaneous disclosure that would enable one skilled in the art to make the invention." In the co-inventor context, the contemporaneous disclosure must enable a skilled artisan to practice the portion of the invention that the co-inventor contributed.The Federal Circuit found that Tavory has not provided any competent evidence that his alleged contribution to the claimed invention—the interface switch—was the result of anything more than the exercise of ordinary skill in the art, he has failed to establish co-inventorship. The Federal Circuit further found that Tavory failed to provide sufficient corroborating evidence that he conceived of the interface switch. The Federal Circuit said he indisputably lacks any contemporaneous documents evidencing such a disclosure and relies instead on the testimony and declarations of various witnesses. However, the Federal Circuit found that while the testimony might establish reduction to practice, it did not establish conception. The Federal Circuit held that Tavory failed to establish a genuine issue of material fact as to his inventorship, and affirmed the grant of summary judgment.