Joint Inventor Need Not Conceive of Entire Invention – Contribution of Elements of Invention Sufficient for Inventorship

In BLUE GENTIAN, LLC v. TRISTAR PRODUCTS, INC., No. 2021-2316 (June 9, 2023) (Prost*, Chen, and Stark), a panel of the Court addressed the requirements for co-inventorship of utility and design patents.

Blue Gentian sued Tristar in 2012 for infringement of six patents, four utility patents and two design patents, all of which related to an expandable hose. Among the features of the claimed hose were a flexible elongated outer tube made of a fabric material and a flexible elongated inner tube made from an elastic material which were unsecured to one another except at their ends. Each of the asserted patents named a single inventor, Michael Berardi, who was Blue Gentian’s principal.

Tristar counterclaimed to correct the inventorship of all six asserted patents by adding a co-inventor, Gary Ragner. Ragner was the named inventor on two other patents to expandable hoses that had been licensed by Tristar.

Berardi had filed his first patent application for an expandable hose in November 2011. Significantly, however, three months prior to that filing, on August 23, 2011, Berardi had met with Ragner, who was the founder of Ragner Technology Corporation and had been seeking investors to help Ragner Tech. bring its first product — an expandable hose called the “MicroHose” — to market. At that meeting, Ragner had shown Berardi a document that detailed the manufacturing process of the MicroHose, including an inner elastomer layer and a reinforcement layer made of polyester yarn, as well as a prototype which had a vinyl inner tube and a yarn cord attached to the outside. Berardi was also told that the version of the MicroHose that Ragner Tech. intended to market would have a full fabric cover. 

Following an evidentiary hearing, the district court concluded that Ragner should have been named as inventor on all six asserted patents. In particular, the district court found that Ragner conveyed three key elements of the host to Berardi, viz. the fabric outer tube; the elastic inner tube; and attaching the tubes only at their ends, and that these key elements amounted to a significant contribution to at least one claim in each of the asserted patents. The district court therefore entered judgment in favor of Tristar and ordered correction of all six asserted patents under 35 U.S.C. § 256.

Blue Gentian then appealed. In an opinion by Judge Prost, however, the Federal Circuit rejected Blue Gentian’s arguments and affirmed the district court.

The panel first addressed Blue Gentian’s challenges relating to the district court’s findings relating to Ragner’s contribution. The panel rejected Blue Gentian’s suggestion that the district court erred by failing to construe any of the claims of the asserted patents before finding that Ragner had contributed to the invention thereof. The panel noted that Blue Gentian had failed to identify even a single dispute about claim scope that was material to inventorship and found that Blue Gentian’s argument that claim construction is always a threshold requirement was “without merit.”

The panel also rejected Blue Gentian’s attack on the district court’s conclusion that Ragner has made a significant contribution to the claimed inventions, noting that Blue Gentian had relied on the elements attributed to Ragner in distinguishing the claimed invention from the prior art. The panel found that features that a patentee relied upon in distinguishing the prior art are necessarily significant. The panel also found that the same three-element contribution applied to the design patents, since a hose with those elements would necessarily have the appearance shown in the claimed designs.

Turning to the issue of corroboration, the panel rejected Blue Gentian’s argument that the district court erred by only requiring corroboration that Ragner conceived of the three key elements, and not requiring separate corroboration that he communicated those elements to Barardi. The panel found that the evidence relied on by the district court was sufficient to conclude that Ragner had, in fact, conveyed those three elements to Barardi at their meeting. The panel also rejected Blue Gentian’s attacks on individual items of evidence, including the prototype that Ragner showed Barardi, noting that corroboration is based on evaluation of the evidence as a whole.

Finally, on the issue of collaboration, the district court had concluded that the information exchange between Ragner and Barardi at their single meeting was sufficient. The panel agreed, rejecting Blue Gentian’s argument that there could be no collaboration in a situation such as this, where one inventor (Ragner) was trying to design a device different from the other inventor (Barardi). The panel noted the principal that a joint inventor need not conceive of the entire invention, and so found it was irrelevant that Ragner did not intend to invent the hose ultimately claimed in the asserted patents. The panel further noted that the meeting between Ragner and Barardi involved the requisite element of joint behavior, viz., one inventor hearing another’s suggestion at a meeting. The panel therefore concluded the district court had not erred.