Co-Inventor’s Triumph: Federal Circuit Affirms Contribution to Hose Patents
By Babak Akhlaghi on July 20, 2023.
The Federal Circuit upheld a decision of the district court to amend inventorship, determining that the alleged co-inventor made significant contributions to the conception of at least one claim in each contested patent. Blue Gentian, LLC v. Tristar Products, Inc., Case Nos. 21-2316; -2317 (Fed. Cir. June 9, 2023) (Prost, Chen, Stark, JJ.)
Blue Gentian, LLC initiated a lawsuit against Tristar Products, Inc., alleging infringement of multiple patents related to an expandable hose, all of which listed Michael Berardi as the sole inventor. In response, Tristar lodged a counterclaim to rectify the asserted patents’ inventorship. Following an evidentiary hearing, the district court concluded that Gary Ragner, a non-party, should have been listed as a co-inventor on all the asserted patents. As a result, the district court ruled in favor of Tristar’s inventorship counterclaim, ordering the amendment of the patents under 35 U.S.C. § 256. Blue Gentian appealed.
In 2011, Ragner Technology Corporation, founded by Mr. Ragner, was in search of investors to launch its MicroHose. In pursuit of this, Mr. Ragner and others met with Mr. Berardi, the named inventor of the disputed patents, at Mr. Berardi’s residence. During this meeting, Mr. Ragner proposed three key elements to Mr. Berardi: (1) the attachment of inner and outer tubes solely at the ends, (2) an outer tube made of fabric, and (3) an elastic inner tube capable of retracting the hose without requiring a metal spring. These three crucial elements were incorporated in at least one claim of each of the asserted patents. Mr. Berardi filed his first patent application for an expandable hose in November 2011, less than three months after the meeting. Blue Gentian sued Tristar, licensee of Mr. Ragner’s patents, for infringement in 2012 for infringement of Gentian’s patents. Tristar counterclaimed to correct inventorship. After an evidentiary hearing, the district court concluded that Mr. Ragner should have been a named inventor on all of the asserted patents. Blue Gentian appealed.
“All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.” Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348–49 (Fed. Cir. 2016). An individual claiming joint inventorship needs to demonstrate that they have made a substantial contribution either to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371 (Fed. Cir. 2020). Additionally, these contributions should stem from some form of collective activity, like working together or operating under shared guidance with the other inventor(s). Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911, 917 (Fed. Cir. 1992).
The Federal Circuit concurred with the district court’s conclusion that the key elements Mr. Ragner shared with Mr. Berardi during their discussion constituted a significant contribution to the conception of at least one claim in each asserted patent. The Court particularly noted that Blue Gentian utilized these features to differentiate the invention of the contested patents from existing art. Consequently, it stands to reason that contributing such defining features is not trivial in quality, given the scope of the complete invention. In conclusion, the Court determined that the district court was correct in asserting that Mr. Ragner contributed significantly to the conception of at least one claim of each asserted patent.